- PTAB · Dec 14, 2022 · IPR2022-01309 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Volkswagen’s motion to join the Apple IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the Apple IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. We find that the merits of the Petition warrant institution.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Having considered the issues, we agree with Petitioner that joinder will promote efficiency, because joinder will reduce the number of parallel challenges to the ’392 patent. Id. at 2. We also find that, because Petitioner will participate in an “understudy role,” joinder will simplify the schedule and eliminate the likelihood of duplicative efforts without prejudice to Patent Owner. Id. at 10–12.” slip op. at 10
NonePatents in suitUS 10,193,392 - Canon, Inc. / Canon U.S.A., Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00965 · APJ John A Hudalla · IPR · Final written decision
Claims 1–9, 12, 13, 16, 18–34, 36, and 37 are unpatentable as obvious over Färber and Dalby, Färber, Dalby, and Morishita, or Färber, Dalby, and Mashimo.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Reader, Petitioner contends a person of ordinary skill in the art (or “POSITA”) “would have had a bachelor’s degree in electrical engineering or computer science, or an equivalent degree, and two to three years of experience in the field of video coding.” Pet. 7 (citing 4 The trial record does not include any evidence of secondary considerations of nonobviousness. Ex. 1002 ¶¶ 75–77). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’714 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not agree with Patent Owner that Petitioner’s claim construction position is deficient. Throughout this proceeding, Petitioner has maintained that no construction of the claims is necessary to resolve the asserted grounds of unpatentability. See Pet. 14–15; Pet. Reply 5. This comports with the discussion of claim construction in our Trial Practice Guide, which contemplates that “a petitioner may include a statement that the claim terms require no express construction.” Patent Trial and Appeal Board Consolidated Trial Practice Guide at 44 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Given Patent Owner has proposed no claim constructions of its own, and given that no issues in the fully developed trial record turn on claim interpretation, we find that Petitioner has satisfied the requirement of identifying “[h]ow the challenged claim is to be construed.”6 37 C.F.R. § 42.104(b)(3). We also disagree with Patent Owner that Petitioner’s claim constructions here must be the same as those that it put forth in the parallel litigation. Petitioner is correct that the posture of different cases may or may not require claim interpretation. For example, Petitioner posits that claim interpretation was necessary in the district court to consider certain infringement issues, whereas no claim construction is necessary here to resolve issues of patentability. See Pet. Reply 7. Although we need not 6 To address Patent Owner’s companion argument, we also find that Petitioner has satisfied the requirement of identifying “[h]ow the construed claim[s are] unpatentable.” 37 C.F.R. § 42.104(b)(4). Our analysis of Petitioner’s unpatentability grounds is set forth in detail below. delve into the court’s consideration of infringement,7 we agree with Petitioner’s premise that the need to interpret claim terms varies depending on the posture of the case. And, as discussed below, no claim construction is necessary to resolve the issues in this inter partes review. Thus, based on the particular circumstances of this case, we see no impropriety in Petitioner’s different claim construction positions across the two forums. For these reasons, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Regarding Petitioner’s rationale for combining Färber and Dalby, Petitioner notes that Dalby expressly mentions and builds upon the teachings of Färber. Pet. 20 (citing Ex. 1002 ¶¶ 351–355; Ex. 1004, 2:22–30). Petitioner further contends that Dalby provides solutions to a problem recognized in Färber, namely that “a mismatch error can result from the difference of a reconstructed P-frame and its corresponding I-frame.” Id. at 20–21 (citing Ex. 1002 ¶¶ 128, 129, 352; Ex. 1003, 3). Petitioner additionally contends that both references utilize the same video compression standard, “which demonstrates that they can successfully be used together and predictably combined, without requiring undue experimentation.” Id. at 21 (citing Ex. 1002 ¶¶ 351–355). Patent Owner does not dispute Petitioner’s reasons for combining Färber and Dalby. We are persuaded by Petitioner’s rationale for the combination because Dalby expressly mentions Färber and extends its teachings, which substantiates than an ordinarily skilled artisan would have combined the references with predictable success. See, e.g., Ex. 1002 ¶¶ 128–133, 351–355; Ex. 1004, 2:22–3:8. Petitioner has persuasively shown that the combination of Färber and Dalby teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references with a reasonable expectation of success. On the entire trial record, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over the combination of Färber and Dalby.” slip op. at 18
Patent outcomesUS 7,116,714 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,116,714 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00959 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 6, 7, 9, and 18 are unpatentable as anticipated by Kodialam; the Board did not reach the Kodialam–AAPA obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Jeffay, Petitioner contends a person of ordinary skill in the art (or “POSITA”) would have possessed “a bachelor’s degree in computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience managing and configuring computer networks, including experience with networking protocols and network routing.” Pet. 15 (citing Ex. 1003 ¶ 54). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’781 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner notes that the parties have put forth certain terms for construction in the underlying litigation, but Petitioner contends that no terms require construction in this case. Pet. 15–16. Patent Owner also does not put forth any terms for construction. PO Resp. 5–6. We determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner contends that Petitioner fails to cite any express teaching of the “identifying” step in Kodialam, and, instead, “the Petition relies solely on Dr. Jeffay’s testimony in an attempt to fill the evidentiary gap.” PO Resp. 14–15 (citing Pet. 23–24; Ex. 1003 ¶ 67); PO Sur-reply 13. Patent Owner further contends that Dr. Jeffay’s supporting testimony “is untethered to any supporting evidence.” PO Resp. 15; see also PO Sur-reply 14–16 (similar arguments). Patent Owner further disputes Petitioner’s analysis to the extent that Dr. Jeffay references critical links that are used for the generation of a multicast routing tree, not a unicast transmission. PO Resp. 16–17 (citing Ex. 1004, Abstr.). Contrary to Patent Owner’s arguments, however, Petitioner cites directly to Kodialam in conjunction with Dr. Jeffay’s testimony. In particular, Petitioner cites Kodialam’s disclosure of solving “the maximum multicast flow problem” by first computing “critical links.” Pet. 23–24 (quoting Ex. 1004, 10:49–57). Petitioner also cites Kodialam’s claim 7 (id. at 24), which discloses “generat[ing] the set of critical links for sets of unicast pairs, each unicast pair defined between the source and one of the plurality of receivers.” Ex. 1004, 16:62–65. These disclosures both support Dr. Jeffay’s testimony and independently establish that Kodialam describes identifying unicast traffic requirements, because Kodialam’s system identifies and prioritizes critical unicast links. See Ex. 1004, 10:49–57, 11:9–26, 16:62–65. For similar reasons, these disclosures also describe the identification of the “first traffic configuration” of unicast packet traffic. See id. Thus, we are persuaded that Kodialam discloses the “identifying” step of claim 1.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Petitioner contends Kodialam qualifies as prior art under 35 U.S.C. § 102(e) based on its filing date. Pet. 16–17. Patent Owner does not dispute the prior art status of Kodialam. We have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. We determine that Kodialam qualifies as prior art under 35 U.S.C. § 102(e) because Kodialam’s filing date of September 29, 2000, is before the earliest effective filing date of the challenged claims, which is November 21, 2003. Ex. 1001, code (22); Ex. 1004, code (22).” slip op. at 12
Patent outcomesUS 7,382,781 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,382,781 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 14, 2022 · IPR2021-00699 · APJ John A Hudalla · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–5 over Cheng, claims 1–3, 6–11, and 12–18 on the stated Cheng-based grounds, including combinations with Shirali and Douglas.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”), filed a Preliminary Response. Taking into account the arguments presented by Patent Owner in the preliminary record, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on October 18, 2021, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“IV. CONCLUSION43 Petitioner has shown, by a preponderance of the evidence, that: (1) claims 1–5 are anticipated by Cheng; (2) claims 1, 2, 6–10, and 12–18 would have been obvious over” slip op. at 83
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Petitioner’s rationale for combining Nishio with Cheng is faulty because it misstates Nishio’s teachings. Dec. on Inst. 40–41. We found that “Nishio does not teach that setting an arbitrary number of subcarriers avoids reporting for each subcarrier,” and, rather, that “Nishio achieves this efficiency by averaging CIRs of the usable blocks and transmitting to the base station only a CQI corresponding to the averaged CIR together with the block numbers.” Id. (citing Ex. 1009 ¶¶ 60, 66). Accordingly, we determined that Petitioner had not established a reasonable likelihood that the subject matter of claim 4 would have been obvious over the combination of Cheng and Nishio. Id. at 41.” slip op. at 77
Patent outcomesUS 7,742,534 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,742,534 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentablePTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision
Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19
Patent outcomesUS 7,203,505 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,203,505 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 13, 2022 · IPR2021-00696 · APJ John D Hamann · IPR · Final written decision
Claims 1–28 are unpatentable: claims 1, 2, 6–16, and 20–28 as obvious over Caglar and Duvivier, and claims 3–5 and 17–19 as obvious over Caglar, Duvivier, and Youn.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’960 patent as one who “would have had a Bachelor of Science degree in Electrical Engineering or an equivalent field, with at least two years of academic or industry experience in video data transmission or comparable industry experience”; and that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art,” and that “[s]imilarly, more experience can substitute for formal education.” Dec. on Inst. 18–19 (quoting Pet. 12 (citing Ex. 1003 ¶ 36)). Patent Owner does not dispute our adoption of Petitioner’s definition, and does not provide its own definition for the level of ordinary skill at the time of the invention of the ’960 patent. See PO Resp. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’960 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“explicitly provides a definition for the term “virtual reference data.” See Pet. 14 (citing Ex. 1001, code (57), 2:17–22); PO Resp. 8–9 (citing same). Namely, the ’960 patent’s Specification states the following: [A] “virtual reference,” as used herein, is defined as a group of pixels (e.g., a block) that is used as reference material for encoding portions of the video signal (e.g., a motion-compensated inter-predicted block), but that does not comprise or represent any portion of the actual video sequence to be displayed. Ex. 1001, 2:17–22; Pet. 14 (citing same); PO Resp. 8–9 (citing same). The parties agree that “virtual reference data” should be given this express definition. Pet. 14; PO Resp. 8–9. We agree with the parties and conclude that “virtual reference data” has the meaning provided by this definition. Ex. 1001, 2:17–22. And although the parties do not explicitly address that the Specification defines “virtual reference” without including the word “data,” we agree with the parties that this same definition applies for the claim term “virtual reference data.” See id.; Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find unavailing Patent Owner’s argument that Caglar fails to teach this limitation because “Ca[gl]ar’s virtual frame is defined on the basis of a version of a complete frame, which is not ‘a portion of the original video signal,’ as required by the claim language.” PO Resp. 9–10 (citing Ex. 1005 ¶ 105); see also PO Sur-reply 1–2 (making same argument). Simply put, the language of this limitation recites “generating virtual reference data based on a portion of the original video signal.” Ex. 1001, 12:1–2 (emphasis added). Notably, the limitation recites “based on,” rather than “from” a portion of the original video signal, for example. Id. As we concluded in our institution decision, the plain meaning of the claim language “based on” is broad enough to cover scenarios, such as taught by Caglar, where the virtual reference data is generated indirectly from the original video signal. See Dec. on Inst. 35; In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (finding “the name of the game is the claim”); see, e.g., Ex. 1005 ¶¶ 103, 105, 201, 243, code (57). Regardless, as we discuss above, Caglar also teaches generating a virtual frame directly by decoding the encoded current frame, which is an encoded portion of the original video signal. Ex. 1005 ¶ 243, Fig. 18.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find persuasive Dr. Lavian’s testimony that one of ordinary skill in the art “would have understood that the data present in the bit-stream would include header information that indicates the use of one or more virtual reference frames.” Ex. 1003 ¶ 134. We find that this testimony is consistent with Caglar’s teachings, rather than being conclusory as Patent Owner argues. Ex. 1005 ¶¶ 246, 248, 276, Fig. 19; PO Resp. 15; PO Sur-reply 12–13. And we find that Caglar teaches that “[t]he identified reference may be a complete frame or a virtual frame and so the decoder determines whether a virtual reference is to be used (step 228).” Id. (emphasis added). Hence, we find that Caglar teaches to one of ordinary skill in the art identifying the indication (i.e., the particular value in the header) of a virtual reference frame in the bit-stream. Ex. 1005 ¶¶ 246, 248, 276, Fig. 19; Ex. 1003 ¶ 134.” slip op. at 29
Patent outcomesUS 8,179,960 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,179,960 - PTAB · Oct 5, 2022 · IPR2022-00516 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–3 and 10 on all five grounds: anticipation by Perahia, Li, or Wax, and obviousness over Li or Wax with Perahia.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that “estimating a second radio channel . . . over said pilot interval” requires that the second radio channel be estimated over the same pilot interval as estimating a first radio channel was performed. See Prelim. Resp. 7. Nevertheless, given that a pilot interval is “predetermined time period . . . for supervisory purposes” (Ex. 1001, 7:41–53), we find that the time for estimating the first and second radio channels need not be exactly co-extensive in order to meet the “same pilot interval” limitation. For example, the pilot interval could be a longer predetermined period of time encompassing (1) the beginning and ending of estimating the first radio channel, then (2) some other activity such as “control, equalization, continuity, synchronization, or reference,” and then (3) the beginning and ending of estimating the second radio channel—so long as all of these are activities are for supervisory purposes. This comports with the Specification of the ’096 patent, which merely mentions “pilot interval” as the period of time over which the SMDA module estimates the first and second radio channels from the access point to the respective first and second mobile stations. That is, the Specification of the ’096 patent does not limit “pilot interval” to a time period for simultaneous and co-extensive estimation of first and second radio channels, as Patent Owner appears to be advocating. Therefore, for the foregoing reasons, based on the present record, we determine the term “said pilot interval” in the phrase “estimating a second radio channel . . . over said pilot interval” recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Instead, the “pilot interval” could be a longer predetermined supervisory period that encompasses non-simultaneous estimating of the first and second radio channels. The parties are invited to address this claim construction issue during trial.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On the present record, we do not agree with Patent Owner’s contention that, because Perahia discloses transmitting first channel training information “in a first channel training period,” and allowing transmission of second channel training information “during a second channel training period,” Perahia fails to show that the estimating of a second radio channel takes place over the same interval over which the estimating of the first radio channel occurred. Prelim. Resp. 6–7. As discussed above, “over said pilot interval” as recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Relying on Dr. Akl’s testimony, Petitioner contends that Perahia transmits channel training information in a “‘channel training period’— which is a pilot interval.” Pet. 23 (citing Ex. 1004, 3:4–12; Ex. 1003 ¶ 87). Dr. Akl testified that, like the ’096 patent, Perahia discloses channel estimation. Ex. 1003 ¶¶ 84–85. According to Dr. Akl, Perahia incorporates U.S. Patent No. 7,352,688 (Ex. 1008) by reference, which discloses antenna elements 1 and 2, wherein “[d]uring a first portion of the channel training period, one antenna element transmits a guard interval 504 followed by two long symbols 506 while the other antenna element is quiet,” and “[t]hen the first element goes into a quiet period.” See Ex. 1003 ¶ 87 (citing Ex. 1004, 8:61–64, 9:4–5, 9:29–30, Figs. 7–8; Ex. 1008, 6:26–45). That is, Dr. Akl testified that Perahia discloses a “pilot interval” that includes a “first portion” for estimating a first channel and another portion for estimating a second channel in a channel training period. Id. (emphasis added). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Perahia discloses “estimating a first radio channel from said access point to said first mobile station over a pilot interval,” and “estimating a second radio channel from said access point to said second mobile station over said pilot interval,” as recited in claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Having reviewed Petitioner’s arguments and supporting evidence in the present record, we are preliminarily persuaded by Petitioner’s contention that a POSITA would have found it obvious to combine the teachings of Li and Perahia for enhancing throughput through the use of SDMA, as testified by Dr. Akl. Pet. 38 (citing Ex. 1003 ¶¶ 110, 113). Accordingly, we determine Petitioner has made a sufficient showing that the combination of Li and Perahia teaches the subject matter of dependent claim 10.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted on all grounds and on all claims challenged in the Petition, i.e., as to claims 1–3 and 10 of the ’096 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Perahia; 2) claims 1–3 are unpatentable under 35 U.S.C. § 102 as anticipated by Li; 3) claim 10 is unpatentable under 35 U.S.C. § 103 as obvious over Li and Perahia;” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,512,096 - Apple Inc. v. Scramoge Technology, Inc.InstitutedPTAB · Sep 13, 2022 · IPR2022-00532 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–5 and 7, finding a reasonable likelihood they are obvious over Zhu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i) Summary of Claim 1 Findings Having reviewed the evidence and arguments of record, we find that Petitioner has demonstrated that Zhu teaches or suggests all the limitations recited in claim 1.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Neither party has proposed a special definition or explicit construction of any claim term. See Pet. 9; see generally Prelim. Resp. 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of wireless power transmission. Lack of work experience can be remedied by additional education, and vice versa. Pet. 8–9 (citing Ex. 1003, Declaration of Dr. Joshua Phinney (“Phinney Decl.”) ¶¶ 18–20). Patent Owner does not challenge Petitioner’s assessment. See generally Prelim. Resp. 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 1 Canadian Patent Application CA 2794703 (Ex. 1005). re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Dr. Phinney’s assessment of the level of ordinary is unchallenged by Patent Owner and appears to be commensurate with the subject matter of the ’652 patent, we apply Petitioner’s description of an ordinarily skilled artisan.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,490,652 - Apple Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Sep 13, 2022 · IPR2022-00529 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claims 1 and 6 were obvious over Hui.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“There is no evidence that a stay has been requested in the parallel District Court litigation. We decline to speculate on how the district court would rule on a stay, if one were requested. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (explaining that factor 1 generally “does not weigh for or against discretionary denial” when neither party has requested a stay). Accordingly, this factor is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Analysis We have reviewed the parties’ arguments and evidence, and we determine that, for purposes of institution, Petitioner has shown sufficiently that the embodiment described in Figures 1a and 5b of Hui teaches or Owner disputes that Petitioner demonstrates that Hui discloses the claim 1 “duty ratio” limitations [1.09] and [1.10] (Prelim. Resp. 24–25), Patent Owner does not address Petitioner’s specific contentions that Hui’s correspondence of the falling times of the fourth and second gating signals with the end of the positive and negative polarity, respectively, determine the respective duty ratios. Petitioner provides sufficient evidence and argument, supported by declarant testimony, that the embodiment shown in Figures 1a and 5b discloses the duty ratios of limitations [1.09] and [1.10]. Pet. 52–55 (citing Ex. 1003 ¶¶ 78–85); see also Realtime Data, 912 F.3d at 1373 (although use of a single reference might have been more properly raised under § 102, “it is well settled that ‘a disclosure that anticipates under §102 also renders the claim invalid under § 103, for “anticipation is the epitome of obviousness.’”). On this record, we are persuaded that Petitioner has made an adequate showing as to those limitations and the other limitations challenged under this ground. In summary, Petitioner provides a reasonable likelihood of prevailing on its contentions that claim 1 and claim 6 of the ’392 patent would have been obvious over Hui’s Figure 1a and 5b embodiment.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“combination of Hui’s Figure 1a and 5b embodiment and Taylor. Pet. 59–75. Petitioner argues that it would have been “obvious, beneficial, and predictable to utilize commonly known and standard techniques to optimize power transfer efficiency (such as the examples in Taylor) and achieve Hui’s stated goal of maximizing power transfer efficiency.” Id. at 61 (citing Ex. 1003 ¶ 96). Although “Hui omits the implementation details of maximizing energy transfer,” Petitioner argues that “a POSITA would have naturally looked to known and standardized techniques for doing so,” such as the techniques in Taylor. Id. at 61 (citing Ex. 1005 ¶ 82; Ex. 1003 ¶ 97). “A POSITA would have been motivated to apply [the] conventional feedback technique” disclosed in Taylor “to Hui’s system to achieve the same benefits,” namely, “having a communication channel from the remote device to the wireless power supply,” recognizing this feedback technique “as being part of the Qi standard.” Id. at 62–63 (citing Ex. 1003 ¶¶ 99–100). According to Petitioner, the combination would have been “straightforward and predictable” with a “reasonable expectation of success.” Id. at 63–64 (citing Ex. 1003 ¶¶ 101–102).” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,193,392 - Vmware, Inc. / Dell Technologies Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Sep 1, 2022 · IPR2021-00572 · APJ John D Hamann · IPR · Final written decision
Claims 1, 2, 6–9, 13, 14, and 18–21 are unpatentable as obvious over Queck; the Board did not reach the other grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’800 patent as one who “would have had at least a bachelor’s degree in computer science, computer engineering, or electrical engineering and two to three years of work experience related to administering distributed computing environments”; and that “[t]his work experience may have included, for example, experience in cloud network design and analysis, client-server, cloud controller communication analysis and evaluation, load balancing, virtualization, latencies optimization, and managing physical and virtual computing environments in the cloud”; and that “[a] master’s degree or higher would have been acceptable in place of the work experience described above.” Dec. on Inst. 21 (quoting Pet. 7–8 (citing Ex. 1003 ¶ 23)). Patent Owner does not dispute our adoption of Petitioner’s definition, and does not provide its own definition for the level of ordinary skill at the time of the invention of the ’800 patent. See PO Resp. 7–8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’800 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below.” slip op. at 9
- Prior constructionPrior construction adoptedPlain and ordinary meaningDecided for petitioner
“We have reviewed the district court’s constructions. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). We agree with the district court and the parties that the terms of the challenged claims should be afforded their plain and ordinary meanings. And we adopt the district court’s statements about exclusion regarding the scope of the plain and ordinary meaning for “[determining/determine] an assignment objective.” We conclude that these exclusion statements are consistent with the claim language of the challenged claims and the Specification of the ’800 patent. We do not provide any further constructions for any claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“In further support of our findings, we also are persuaded by Petitioner’s argument that one of ordinary skill in the art would have found it obvious for central node 102 to “determine[] which among the ‘assignment objectives’ applies to a task instance to be deployed.” Pet. 30. In particular, we find persuasive Dr. Mir’s testimony that one of ordinary skill in the art would have been “motivated to enable provisioning manager 134 to determine an assignment objective from amongst the [disclosed] assignment objective(s) to give the system the flexibility to optimize goals relevant for different types of tasks.” Ex. 1003 ¶ 116. This flexibility is consistent with Queck’s teachings of the provisioning manager 134 being configurable to determine factors to decide how to deploy task instances and data partitions. Ex. 1006 ¶ 37. We find unavailing Patent Owner’s argument that “this claim limitation requires an active step of ‘determining’ of ‘an assignment objective to be achieved in assigning compute nodes,” and that “[t]here is no such step of ‘determining’ disclosed in Queck.” PO Resp. 9–10; see also id. 12 (making same argument). As we find above, Queck teaches that its provisioning manager 134 determines which goal (i.e., assignment objective) for which to optimize. Ex. 1006 ¶ 37. In addition, Queck’s paragraph 76 teaches that allocation module 604—which is within provisioning manager task instance and data partition to be deployed.” Ex. 1006 ¶ 76. Such a characteristic (e.g., whether “m” task instances are expected) may be determined at runtime by the provisioning manager 134; thus Queck teaches determining which goal and algorithm to implement. Id. ¶¶ 76, 111. In light of these teachings, we find unavailing Patent Owner’s argument that “Petitioner fail[s] to identify anything within the four corners of Queck directed to the active step of ‘determining’ which one of the purported ‘different goals’ to achieve.” PO Resp. 12 (citing Pet. 27, 31); Ex. 1006 ¶¶ 76, 111. We also find unavailing Patent Owner’s argument that “Queck’s determining of a ‘number of factors to decide whether and how to deploy the task instance’ is not the required determining of an assignment objective,” but instead, “on its face only determines ‘a number of factors’ (i.e. not an assignment objective), and ‘whether to deploy the task instance’ (i.e. not an assignment objective).” PO Resp. 10 (quoting Ex. 1006 ¶ 37). Rather, as we find above, this passage from Queck teaches that the provisioning manager 134 determines factors to decide how to deploy the task instance and data partition; such deployment requires determining the assignment objective as there are different algorithms for each objective. Ex. 1006 ¶¶ 37; see also id. ¶¶ 76 (teaching that the allocation module 604 implements algorithms based on characteristics of the task instance and data partition to be deployed), 108, 112.” slip op. at 20
- Strike new argumentNew argument disregardedDecided for petitioner
“Patent Owner argues for the first time in its Sur-reply that Queck fails to teach “obtaining a set of assignments by applying an algorithm,” as recited in this limitation. PO Sur-reply 5–8; see generally PO Resp. These are new arguments, and cannot properly be raised in Patent Owner’s Sur-reply. See Paper 9 (Scheduling Order), 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). Nor does Petitioner address this limitation in its Reply. See generally Pet. Reply. Accordingly, these new arguments, raised for the first time in Patent Owner’s Sur-reply, will not be considered. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply . . . .”). After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner in its Response (see generally PO Resp.), we are persuaded that Petitioner demonstrates by a preponderance of the evidence that Queck teaches “wherein the assignment objective is based on a latency cost used in obtaining a set of assignments by applying an algorithm.”” slip op. at 30
Patent outcomesUS 9,164,800 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,164,800
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.