- PTAB · Jul 7, 2025 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–18 because Tesla showed a reasonable likelihood that claims 1–18 would have been obvious over Wallen and Berggren.
RulingsInstitution decision- Director reviewOther
“Memorandum (“Memorandum”) issued on March 26, 2025, Patent Owner filed its Discretionary Denial Brief on April 7, 2025. Paper 6. Petitioner filed its Opposition Brief on May 27, 2025. Paper 8. On June 13, 2025, Acting Director Stewart issued a decision determining that discretionary denial of institution is not appropriate in this case and referring the Petition to us for merits and other non-discretionary statutory considerations. Paper 9.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the asserted prior art. slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“establishes sufficiently for the purpose of institution that the combined teachings of Wallen and Berggren teach or suggest all of the limitations recited in claim 1.” slip op. at 14
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,206,670 - Silicon Motion Inc. v. K.Mizra, LLCInstitutedPTAB · Mar 5, 2025 · IPR2024-01241 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR of claims 1–2 and 4–15 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2, 4–7, and 9–15 are obvious over Johnson or Stubbs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below, and based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and 2-3 years of experience in memory system design,” or, alternatively, “a Master’s degree in one of those fields and 1-2 years of relevant experience.” Pet. 9 (citing Ex. 1003 ¶¶ 26–29). Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “that no construction is necessary for any terms for the purposes of this Petition as the challenged claims are invalid under any reasonable construction.” Pet. 9. Patent Owner states that “the Board need not construe any claim term in a particular manner to arrive at the conclusion that the Petition is substantively deficient.” Prelim. Resp. 7. 5 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. In view of the parties’ positions, we determine that we need not expressly construe any terms for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to combine Johnson and Moss is inadequate. See Prelim. Resp. 20–24. We tend to agree. In the “Motivation to Combine Johnson and Moss” section, the Petition first asserts that “Johnson and Moss are in the same field of endeavor,” which is insufficient without more to provide a motivation. See, e.g., Sisvel Int’l S.A. v. Sierra Wireless, Inc., 82 F.4th 1355, 1364 (Fed. Cir. 2023). The Petition then asserts that “[t]o provide enhanced flexibility, [one of ordinary skill in the art] in possession of Johnson would look to Moss to incorporate a plurality of delay elements to the data strobe signal.” Pet. 22. This is not persuasive because (a) Petitioner argues that Johnson already provides a plurality of delay elements, (b) Petitioner fails to explain where or how additional delay elements from Moss would be added to Johnson, and (c) Petitioner fails to explain how or why the modification would “provide enhanced flexibility,” or even what “enhanced flexibility” might mean in 9 “a first sampling circuit to sample the first delayed data signal based on the strobe signal” 10 “a second sampling circuit to sample the second delayed data signal based on the received strobe signal” this context. Petitioner also argues that “Moss further discloses that the size of the data path – i.e. the number of data pins in each data path – is a design choice well within the knowledge and ability of a POSITA, and expressly recites examples of 4, 8, and 16-bit wide data paths.” Pet. 23. We agree that varying the width of the data path would have been within level of ordinary skill and would have depended on the particular application, but the Petition fails to explain how or why that would have made it obvious to incorporate various elements of Moss into Johnson.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,111,608 - Silicon Motion Inc. v. K.Mizra LLC.InstitutedPTAB · Mar 5, 2025 · IPR2024-01240 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–19 based on all asserted challenges, finding a reasonable likelihood of success on the Meaney and Meaney-Greeff obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an 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.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’466 patent based on all the challenges presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in Electrical Engineering, Computer Engineering, or a related field as well as at least two years of academic or industry experience in design and implementation of high-speed digital communication systems.” Pet. 13. Petitioner further asserts that “[a]n individual with an advanced degree in a relevant field, such as computer or electrical engineering, would require less experience in the design and implementation of high-speed digital communication systems, and vice versa.” Id. Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that “[a] POSITA would have been motivated to incorporate the termination circuitry disclosed in Greeff with the system of Meaney to achieve enhanced system performance and reliability.” Pet. 53 (citing Ex. 1002, app. A at 82). As support, Petitioner asserts that “Greeff’s termination circuitry ensures proper signal integrity and reduces reflections in high-speed data transmission systems.” Id. (citing Ex. 1006, 1:28–31, 4:10–12, 8:3–5; Ex. 1002, app. A at 82). Petitioner further asserts that “Meaney’s calibration techniques, when applied to the termination resistance and transistor drive strength of Greeff, would ensure that these parameters remain optimal throughout system operation.” Id. (citing Ex. 1002, app. A at 82); see also id. at 54 (“A POSITA would have found it obvious to apply Meaney’s calibration process to Greeff’s termination circuitry in order to optimize the termination resistance and drive strength of the termination circuitry.”). Petitioner adds that “[a] POSITA would have had a reasonable expectation of success in combining Meaney and Greeff.” Id. at 54. According to Petitioner, “[t]he integration of Greeff’s termination circuitry into Meaney’s system would have been straightforward and cost-effective,” any “required modifications are minimal, and the results of the combination are predictable, given the complementary nature of the technologies.” Id. (citing Ex. 1002, app. A at 82). Patent Owner does not dispute Petitioner’s analysis for this limitation. See Prelim. Resp. Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Meaney and Greeff teaches or suggests the recited “circuitry” of limitation 17a. We also are persuaded that Petitioner’s proffered reasoning for modifying Meaney’s system to include Greeff’s termination circuitry, namely, to ensure proper signal integrity and reduce reflections, is sufficient to support institution. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 26
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,160,466 - PTAB · Mar 4, 2025 · IPR2024-01252 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 on the asserted obviousness ground over Wu and Doherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Contrary to Patent Owner’s arguments, Wu and Doherty are not cumulative to Knepper. As Petitioner argues, the Petition relies on Wu’s teachings regarding a digital recording/play back system allowing users to fast forward through or skip over advertisements during playback and Doherty’s teachings regarding rescheduling advertisements and other items of information (e.g., media content) in response to user input—neither set of teachings is present in Knepper. Reply 2.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construction for “intersplicer” as “software that selects advertising content and controls insertion and conveyance of advertising content in media content.” Pet. 5 (citing Ex. 1001, code (57), 7:45–55, 15:4–18). The specification implies that the intersplicer is “application software” that may include an “‘intersplicer’ module.” Ex. 1001, 7:45–58. The module “select[s] . . . the ads to be shown” and controls the insertion and conveyance of ads and the application software “automatically edits the selected advertisements into the presentation stream.” See Pet. 5 (quoting Ex. 1001, 7:45–55; citing Ex. 1003 ¶ 23); see also Ex. 1001, code (57) (“The intersplicer combines the media files with the ad files by providing control signals to the media player, causing the media player to present the ad files with the selected media files.”). Patent Owner does not propose a construction for “intersplicer” at this stage in this proceeding. See generally Prelim. Resp.7 The preliminary record supports Petitioner’s proposed construction of an “intersplicer” for purposes of this Institution Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Feb 13, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–26 on all petition challenges and granted Altice USA’s motion to join IPR2024-00322, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Comcast IPR met the “reasonable likelihood” standard of § 314(a). IPR2024-00322, Paper 13, 36.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2024- 00322. Nonetheless, we lay out the following restrictions in order to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing. Specifically, we limit Petitioner Altice USA, Inc.’s participation in the joined proceeding, such that (1) Comcast Communications, LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding, and (2) Altice USA, Inc. is bound by all filings by Comcast Communications, LLC in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Altice USA, Inc. receives permission to file an independent paper. Altice USA, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding, so long as Comcast Communications, LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2024-00322 and protects the interests of Comcast Communications, LLC as original petitioner in IPR2024-00322, and of Patent Owner. For the foregoing reasons, and with the limitations discussed above, Petitioner’s Motion for Joinder is granted.” slip op. at 6
NonePatents in suitUS 8,356,251 - PTAB · Feb 4, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–26 on all petition grounds and granted Charter’s motion to join IPR2024-00322, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Comcast IPR met the “reasonable likelihood” standard of § 314(a). IPR2024-00322, Paper 13, 36.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“not be impacted if it were to join that proceeding because “[t]he grounds in the instant Petition—and evidence upon which they rely—are identical to the grounds in the Comcast IPR, which the Board instituted.” Mot. 1, 5. Furthermore, Petitioner agrees that, if joined as a party to the Comcast IPR, it will act as “understudy” and will not assume an active role unless Comcast terminates its involvement after joinder. Mot. 1, 7–8. Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2024- 00322. Nonetheless, we lay out the following restrictions in order to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing. Specifically, we limit Petitioner Charter Communications, Inc.’s participation in the joined proceeding, such that (1) Comcast Communications, LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding, and (2) Charter Communications, Inc. is bound by all filings by Comcast Communications, LLC in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Charter Communications, Inc. receives permission to file an independent paper. Charter Communications, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding, so long as Comcast Communications, LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2024-00322 and protects the interests of Comcast Communications, LLC as original petitioner in IPR2024-00322, and of Patent Owner.” slip op. at 6
NonePatents in suitUS 8,356,251 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00819 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one claim unpatentable over Behbahani, Leete, and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’164 patent. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’164 patent or any related patents dbased on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework when determining whether to exercise its discretion under 35 U.S.C. § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 18
- Skill levelSkill level patent owner adoptedOther
“of the alleged invention would have had “a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communication devices.” Pet. 10 (citing Ex. 1003 ¶¶ 27–29). Petitioner further states that “[a]dditional education or experience might substitute for the above requirements.” Id. Relying on Dr. Larson, Patent Owner argues that a person of ordinary skill “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such systems and familiarity with wireless standards.” Prelim. Resp. 27– 28 (citing Ex. 2005 ¶ 50). Patent Owner further states that “[a]dditional education could substitute for experience and vice versa.” Id.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00818 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23, finding a reasonable likelihood that claim 7 is unpatentable over Behbahani, Leete, and Tan under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, Petitioner has made a sufficient showing as to this limitation for purposes of institution.11 Petitioner has sufficiently shown, and Patent Owner does not appear to dispute, that Behbahani switches from its high-power filter to its low-power filter in response to signal strength measurements, and that this “filter swap” varies the impedance and/or bias current in the receiver. The only disputed issues appear to be: (1) whether the claim language excludes Behbahani’s filter” slip op. at 40
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’202 patent. Pet. 75. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’202 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–72. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term for this case. See Pet. 8–10; Prelim. Resp. 28–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.c, infra. The parties may further address the meaning of the term “signal path” during the trial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,524,202 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00817 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Behbahani, Leete, and Tan.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends a person of ordinary skill in the art “would have had a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 39–41). Patent Owner contends that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 28 (Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term in this proceeding. See Pet. 8–10; PO Resp. 29–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.f, infra. The parties may further address the meaning of the term “signal path” during the trial. Patent Owner also argues that we should dismiss the Petition because Petitioner is relying on a construction that it disagreed with in the related district court litigation, citing the Board’s non-precedential decisions in Samsung Elecs. Am., Inc. v. Cobblestone Wireless LLC, IPR2024-00319, Paper 16 at 13–23 (PTAB Jun. 24, 2024) and Hologic, Inc. v. Enzo Life Sciences, Inc., IPR2018-00019, Paper 21 at 5–7 (PTAB Nov. 28, 2018). Prelim. Resp. 30–32. Patent Owner, however, relies on a flawed understanding of the Samsung case. In Samsung, the Board determined that Petitioner had failed to establish a reasonable likelihood of success because it offered and relied on a claim construction that it failed to support, disagreed with, and disparaged, and that this claim construction was not agreed upon by the patent owner or adopted by a district court. Samsung, Paper 21 at 13–23. Specifically, as the Board pointed out in Samsung, the petitioner argued and submitted testimony from its expert that its proffered construction was “expressly excluded” by the specification of the challenged patent and was “contrary to [the term’s] plain and ordinary meaning.” Id. at 14–15, 19–20. In reaching its decision in Samsung, the Board expressly “distinguish[ed] this case from situations where a petitioner relies on the ordinary meaning of a claim term, offers alternative constructions of a claim term, or relies on a construction agreed upon by the parties in the proceeding at issue.” Id. at 21. Here, unlike in Samsung, Petitioner relies on the plain and ordinary meaning of the dynamic limitation, which is agreed to by the parties in this proceeding and has been adopted by district courts in parallel litigation. We similarly find the facts in Hologic distinguishable from those presented here. See Hologic at 4 (stating, for example, that “[n]early every time [p]etitioner discusses its use in the [p]etition of [p]atent [o]wner’s proposed construction, [p]etitioner affirmatively disagrees with the construction it adopts.”). Therefore, we reject Patent Owner’s argument that Samsung and Hologic support dismissal of the Petition here. Other than the terms discussed above, we determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this Decision. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Director Vidal has instructed the Board that General Plastic factor 1 should not be expanded beyond Valve to apply to parties that do not have a significant relationship. See Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12 at 6 (Director Vidal, April 19, 2024) (“The majority’s Decision in this proceeding improperly expanded the discretionary principles set forth in General Plastic and Valve to apply to petitioners that are not the same and do not have a ‘significant relationship.’”). Moreover, Director Vidal has instructed that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Id. We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’825 patent. Pet. 70. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’825 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the proposed grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–68. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,129,825 - PTAB · Oct 23, 2024 · IPR2024-00679 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 28, 38, 39, 41–43, 53, 56–59, 61–63, and 65–68 on all asserted grounds after finding a reasonable likelihood that claim 28 was obvious over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the present record, we agree with Patent Owner that the recited “reconfiguring the communication port” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfiguring the communication port” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1503 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1505 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1503 ¶ 64; Ex. 1506 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1505 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that Petitioner has shown sufficiently, for purposes of instituting review, that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1503 ¶ 64.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484
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.