- PTAB · Dec 29, 2022 · IPR2022-01078 · APJ Scott B Howard · IPR · Institution
The Board instituted review of claims 1–9 and 11–13 on all asserted grounds, finding a reasonable likelihood that claim 1 would be obvious over Pedersen, Visser, and Alves.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Pedersen, Visser, and Alves. See Pet. 14–40 and 49–68. Based on the current record, we are persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 1.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“date, not the scheduled trial date. Interim Fintiv Guidance at 8–9. Because the Final Written Decision will be due approximately 2 months after the expected trial date, this factor weighs slightly in favor of exercising our discretion to deny the Petition.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues “that no express constructions of the claims are necessary” and the terms “should be given their plain and ordinary meaning.” Pet. 13–14. Patent Owner agrees that the claim limitations should be given their “plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the purported invention of the ʼ701 patent.” Prelim. Resp. 13. Patent Owner also points out that Petitioner advances a different claim construction in the district court proceeding. Id. at 14. For the purposes of this Decision, we need not expressly construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”)7 “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of earphones and associated signal processing. The PHOSITA could have also obtained similar knowledge and experience through other means.” Pet. 13 (citing Ex. 1002 ¶ 17). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 13 (citing Pet. 13). Accordingly, for purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.8” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,057,701 - Samsung Electronics Co., Ltd. / Apple Inc. et al. v. Smart Mobile Technologies LLCInstitution deniedPTAB · Dec 5, 2022 · IPR2022-01003 · APJ Nathan A Engels · IPR · Institution
The Board denied institution of IPR2022-01003 because the patent owner’s stipulation removed the need for a second petition and petitioner showed no exceptional circumstances.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Here, Petitioner’s Notice states that the ’083 patent should have a priority date of July 17, 2000, but Petitioner states that in the parties’ district-court litigation, Patent Owner has “reserved the right” to advanced a June 4, 1999 priority date. Notice 2–3, 5. “For these reasons,” Petitioner states that “the priority date is in sufficient dispute to justify institution of two petitions against the ’083 patent,” stating that the Petition in IPR2022- 01002 applies references that qualify as prior art to a July 17, 2000 priority date but not to a June 4, 1999 priority date, while the Petition in this proceeding applies references that qualify as prior art to the June 4, 1999 priority date. Notice 4. In response, Patent Owner states that “Petitioner[’s] basis for presenting two petitions is easily eliminated and rendered moot because Patent Owner stipulates that if the Board denies the [IPR2022]-01003 Petition, Patent Owner will not challenge that the Paulraj and Heath references qualify as prior art in the IPR2022-01002 proceeding.” Prelim. Resp. 1. In light of Patent Owner’s stipulation, Petitioner’s concern regarding the ’083 patent’s priority date does not warrant institution on two petitions. Petitioner has not otherwise shown exceptional circumstances that would warrant institution on two petitions. See Pet. 5–6 (arguing the two Petitions present only a reduced burden on Patent Owner). For the reasons explained in our Decision Granting Institution in IPR2022-01002, we preliminarily determine Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’083 patent, but we do not institute an inter partes review in this proceeding, IPR2022-01003, for the reasons set forth above. See 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“present only a reduced burden on Patent Owner). For the reasons explained in our Decision Granting Institution in IPR2022-01002, we preliminarily determine Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’083 patent, but we do not institute an inter partes review in this proceeding, IPR2022-01003, for the reasons set forth above. See 35 U.S.C. § 314(a). III. CONCLUSION We do not institute an inter partes review in this proceeding. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition in IPR2022-01003 is denied and no inter partes review is instituted in IPR2022-01003.” slip op. at 5
Discretionary denialPatents in suitUS 9,191,083 - Honeywell International, Inc. / TCT Mobile (US) Inc. et al. v. 3g Licensing S.A.No claims unpatentablePTAB · Nov 14, 2022 · IPR2021-00908 · APJ Russell E Cass · IPR · Final written decision
Petitioner failed to prove claims 1, 2, 4–7, 9–13, and 15–23 unpatentable as obvious over Philips46 alone or Philips46 and Nokia.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“A claim “shall be construed 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).” 37 C.F.R. § 42.100(b) (2020). Neither party proposes a construction of any claim terms. Pet. 29; PO Resp. 15. We determine that it is not necessary to provide an express interpretation of any 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 9
- Skill levelSkill level board ownDecided for patent owner
“In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art as including a Bachelor’s degree in electrical engineering, computer engineering, or a similar discipline with approximately two years of signal processing experience, which is supported by the declaration of Dr. Clark and the prior art of record. Inst. Dec. 12 (citing Ex. 1002 ¶¶ 70–72). We also agreed with Patent Owner that a combination of more experience in the field and less education or more education and less experience in the field may also suffice. Id. In its Patent Owner Response, Patent Owner states that it does not object to the level of ordinary skill we adopted in the Institution Decision. PO Resp. 9. For purposes of this Final Written Decision, we adhere to the level of ordinary skill adopted in our Institution Decision, which is consistent with the disclosures of the ’718 patent and the asserted prior art.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“First, we find that Petitioner has not sufficiently shown that one of ordinary skill would have been motivated to swap the last two bits in the last row of the Philips46 table in order to provide more protection to the most significant bit (MSB). Even if we were to agree with Petitioner that one of ordinary skill would have understood that swapping the last two bits would have provided more protection to the MSB, Petitioner has not sufficiently shown that one of ordinary skill would have believed that such a change would be desirable. Patent Owner introduces evidence from Dr. Smith and the ’781 patent that there was “a tradeoff between BER and RMS error” and that “efforts to minimize RMS error and to minimize BER produce conflicting and incompatible results.” Ex. 1001, 11:38–44; Ex. 2006 ¶¶ 13, 43. These conflicting results are supported by the ’718 patent specification’s comparison of various codes (represented by C1, C2, embodiment 2, and embodiment 3), which found that the embodiment that had the best BER performance (C1) had the worst RMS error performance, and the embodiment with the best RMS error performance (embodiment 3) had the worst BER performance. Ex. 1001, 11:48–51, 11:58–61. We also find credible Dr. Smith’s testimony that “[a]dding all protection to just the MSB removes protection for all other bits,” which would be expected to reduce BER performance. Ex. 2006 ¶ 16.” slip op. at 26
Patent outcomesUS 7,319,718 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,319,718 - PTAB · Oct 26, 2022 · IPR2022-00766 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–8 on all presented obviousness challenges, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–8 of the ’434 patent on all presented challenges. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field (or equivalent work experience to such a degree) with at least two years of experience in communications systems and systems for textual processing and analysis, or a person with a master’s degree in computer science, computer engineering, electrical engineering, or a similar field with a specialization in communications systems including instant messaging and systems for analyzing language. ordinary skilled artisan “would have known and had the skills necessary to design or implement communications systems and applications in compliance with standards such as TCP/IP, UDP, XMPP and SIMPLE, to implement known techniques for natural language processing (NLP), and to understand common techniques for identifying patterns in text.” Id. at 10 (citing Ex. 1003 ¶¶ 57–60). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’434 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that, “[b]ased on the prior art’s description of the claimed elements being similar to that of the ’434 patent specification, no formal claim constructions are necessary in this proceeding.” Pet. 2. shows a reasonable likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“8. Petitioner’s Asserted Motivation to Combine Petitioner argues that one of ordinary skill in the art would have been motivated to combine Gillig and Rose so that Gillig’s telephone transmits and receives digital voice data as taught by Rose. Pet. 39 (citing Ex. 1003 ¶ 125; Ex. 1005, Abstract, 1:8–18, 2:62–3:4, 7:10–35, 18:31–55, 24:29–51). According to Petitioner, one of ordinary skill in the art would have made the proposed modification to (1) implement digital cordless communication features, (2) increase security by using digital encryption schemes, (3) achieve “true noise free conversations” like in Rose, and (4) incorporate positive acknowledgement of receiving data with possible retransmission of data. Id. at 39–42 (citing Ex. 1003 ¶¶ 126–128; Ex. 1004, 2:63–3:8; Ex. 1005, 1:8–3:59, 6:53–10:12, 10:34–63). Petitioner contends that the modification would have had predictable results and a reasonable expectation of success. Id. at 42–43 (citing Ex. 1003 ¶¶ 129, 130; Ex. 1004, 2:63–65). Petitioner also contends that one of ordinary skill in the art would have further modified the Gillig-Rose telephone in view of Billström so that the modified telephone would transmit and receive packet data using Internet Protocol in a cellular system. Pet. 45–46 (citing Ex. 1003 ¶ 131). Petitioner argues that the ordinary skilled artisan would have made the proposed modification to increase transmission capacity, use improved data packet services in an integrated manner. Id. at 46–47 (citing Ex. 1003 ¶¶ 131–133; Ex. 1006, 3:53–4:20, 8:17–18, 8:54–56, 9:43–49, 10:7–13, 10:25–31, 17:33–42, claims 8, 36). Petitioner also argues that the proposed combination would have had predictable results and a reasonable expectation of success. Id. at 47–49 (citing Ex. 1003 ¶¶ 134, 135; Ex. 1004, 2:68–3:3; Ex. 1006, 1:5–67). At this stage, the asserted references and declarant testimony sufficiently support Petitioner’s motivation for combining Gillig, Rose, and Billström in the manner proposed.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,824,434 - Cradlepoint, Inc. / Dell Inc. et al. v. 3g Licensing S.A.All claims unpatentablePTAB · Oct 18, 2022 · IPR2021-00640 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–96 challenged in the decision were shown unpatentable under §103 over the listed combinations of TS 45.008, TS 25.304, TS 25.331, and Japenga.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience (or additional education), including experience with cellular telecommunication systems,” that such experience would have included “designing or implementing user equipment or network equipment or signaling protocols,” and that such a person “would have [had] a working understanding of the then-existing wireless communications standards.” Pet. 16–17 (citing Ex. 1004 ¶¶ 20–24). Patent Owner “concurs with Petitioner[] on the proposed level of ordinary skill in the art at the time of invention.” PO Resp. 7–8. Because the ’383 patent “relates to a dual mode mobile telecommunication device in general (for instance a UMTS (Universal Mobile Telecommunications System) and GSM (Global System for Mobile Communications) dual mode device), and to an apparatus and method for selecting cells in mobile telecommunications system user equipment” (Ex. 1001, 1:21–26), and in view of the parties’ agreement, we find Petitioner’s formulation appropriate, and adopt it.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“III. CLAIM CONSTRUCTION The parties do not raise any claim construction issues and we, accordingly, do not construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“e. Motivation to Combine TS 25.008 and TS 25.304 Petitioner argues that one of skill in the art “would have been motivated to combine the teachings of TS 45.008 and TS 25.304 to arrive at a multi-RAT UE that performs cell reselection according to the procedures in both of these standards documents” and that the combination “would have 7 Patent Owner argued in the Response that we improperly relied on TS 45.088 for this step. See PO Resp. 8–10. As we explained at the hearing, however, that was not the case. See Paper 41, 35–36. been obvious based on the specific motivation to combine provided by the documents themselves.” Pet. 18–20. Petitioner further argues that the combination would have been nothing more than applying a known technique––“TS 25.304’s procedures for determining if a specific UTRAN cell is barred and therefore may not be camped on for a period”––to a known method ready for improvement––“TS 45.008’s procedures for identifying a UTRAN cell to reselect for camping when camped on a GSM cell”––to yield predictable results––“a multi-RAT UE capable of determining that a particular UTRAN cell should not be reselected to camp on for a period if the UTRAN cell is barred).” Id. at 19–20 (citing Ex. 1004 ¶ 187). Patent Owner does not argue that there would not have been a motivation to combine. As noted above, these references expressly incorporate each other,” slip op. at 20
- Expert testimonyPetitioner expert creditedOther
“TS 45.008 is a 3rd Generation Partnership Project (3GPP) specification that “specifies the Radio sub-system link control implemented in the Mobile Station (MS), Base Station System (BSS) and Mobile Switching Centre (MSC) of the digital cellular telecommunications systems GSM.” Ex. 1005, 8.5 The radio sub-system link control aspects addressed by TS 45.008 include handover, RF power control, radio link failure, cell 5 Petitioner relies on the Declaration of Craig Bishop (Ex. 1016) to establish the prior art status of the 3GPP documents. See Pet. 9–13. We find that testimony sufficient on its face, and Patent Owner does not argue these documents are not available as prior art.” slip op. at 13
Patent outcomesUS 8,600,383 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,600,383 - PTAB · Sep 29, 2022 · IPR2022-00808 · APJ Paul J Korniczky · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5, 6, 10, 13, and 16–18 on all five asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“authority to institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we grant Petitioner’s request to institute an inter partes review of claims 1–3, 5, 6, 10, 13, and 16–18 of the ’501 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“presented a Sotera stipulation stating that Petitioner will not pursue in the Texas litigations any grounds raised or that could have been reasonably raised in this IPR. See Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 at 18 (PTAB December 1, 2020) (precedential, designated December 17, 2020); see Director’s Fintiv memo at 3 (stating “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB”). However, Petitioner has presented a Sand Revolution stipulation stating that Petitioner will not pursue in the Texas litigations any grounds raised in this IPR. Pet. 13; see Sand Revolution II LLC v. Continental Intermodel Group - Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative, designated July 13, 2020) (stating “Petitioner will not pursue the same grounds in the district court litigation”). In addition, although Petitioner relies on the same prior art in both proceedings, given the facts of this case, there should not be any overlap by the time of trial. This is because we will issue a Final Written Decision before Patent Owner’s expected trial date. Thus, Petitioner will be estopped from presenting any argument which it actually raised or reasonably could have raised during this proceeding. 35 U.S.C. § 315(e)(2). Accordingly, this factor weighs against exercising our discretion to deny the Petition.” slip op. at 53
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of networking and wireless devices. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not contest Petitioner’s proffered level of skill discussed by Petitioner’s declarant. Prelim. Resp. 2. We adopt Petitioner’s definition of the level of ordinary skill for the purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on the present record, we do not agree with Patent Owner’s proposed construction. For the reasons below, we construe the term “dynamic conversion” to mean “conversion when and as needed and in real time.” We do not agree with Patent Owner that the ’501 patent means the conversion from a first function to a second function precludes the need for any user intervention.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,442,501 - Slack Technologies, LLC v. Ginegar LLCInstitutedPTAB · Sep 26, 2022 · IPR2022-00542 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–16 based on the sole § 103 ground over Selbie and Griffin, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–16 of the ’865 patent on the only presented challenge.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner does not point to any language in the claims themselves to support its proposed interpretation of “a single transcript.” See Pet. 3–7. On the present record, the claims themselves do not provide or imply any specific meaning or definition of “a single transcript.” Turning to the Specification, Petitioner points to Figure 1 and its related description. Pet. 3–4 (citing Ex. 1001, 3:43–45, Fig. 1). According to Petitioner, Figure 1 provides an example of “a single transcript,” and the ’865 patent states that “each of the text messages and voice messages can be logged in a single chat transcript 170 displaying a chronological order.” Id.; Ex. 1001, 3:43–45, Fig. 1. At this stage, we agree with Petitioner that the Specification of the ’865 patent supports Petitioner’s proposed interpretation of “a single transcript.” Ex. 1001, 3:43–45, Fig. 1. On the present record, the Specification does not present a definition of “transcript” and does not indicate a narrower interpretation for the term.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on the arguments and citations to record evidence presented in the Petition, Petitioner shows a reasonable likelihood of prevailing with respect to at least one of claims 1–7 in its challenge based on Selbie and Griffin.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“(3) Petitioner’s asserted motivation to combine Patent Owner further responds that Petitioner does not sufficiently present a motivation to combine Selbie and Griffin. Prelim. Resp. 2, 14–18. We need not determine this issue for purposes of institution, because we have determined that Petitioner has shown obviousness over Selbie alone. However, we provide this discussion to provide further guidance to the parties on this issue.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,760,865 - Slack Technologies, LLC v. Ginegar LLCInstitutedPTAB · Sep 26, 2022 · IPR2022-00541 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1 and 2, finding a reasonable likelihood that at least one claim is unpatentable under each of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1 and 2 of the ’521 patent on all presented challenges.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not present a proposed level of ordinary skill in the art and does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Thus, based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’521 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, because determining whether Petitioner shows a reasonable likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree that at this stage, the evidence of record supports Petitioner’s asserted reason to combine. Pet. 14–16 (citing, inter alia, Ex. 1003 ¶¶ 71–78). Because Petitioner makes clear that it is relying on its proposed interpretation of “autonomically generated,” and the parties may dispute Petitioner’s interpretation, Petitioner ostensibly presents an alternative argument if “autonomically generated” as recited in claim 2 requires AI learning and neural network learning features. See Pet. 36–38. Based on the preliminary record, Petitioner’s asserted motivation to combine Biggs and Borden to include such features is sufficient for the purposes of institution.” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,367,521 - Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing SAAll claims unpatentablePTAB · Sep 15, 2022 · IPR2021-00639 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–25 are unpatentable as obvious; the Board denied the motion to amend because proposed substitute claims 26–50 would have been obvious over Oksala or Oksala and Yoshioka.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI International, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“e. Conclusion For the reasons provided above, we are persuaded that each limitation of independent claim 1 is either taught or suggested by Oksala. We are also persuaded that Oksala’s disclosure would have motivated a person of ordinary skill in the art to modify Oksala, as Petitioner contends, to yield the subject matter of claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Oksala.” slip op. at 52
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 35 and 43 would have been obvious over Oksala.” slip op. at 78
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“2. Indefiniteness In its Opposition, Petitioner contends the limitations “wherein each established data connection is a packet-switched connection; and wherein each requested data connection is a packet-switched connection,” as recited in substitute claim 26, and similarly recited in substitute claims 35 and 43, render the proposed substitute claims indefinite. MTA Opp. 12 (emphases added). First, according to Petitioner, the term “packet-switched connection” does not have a claim construction, which means that it can refer to two different types of packet-switched data (i.e., Layer 1 and packet network). Id. at 12. Second, Petitioner contends that there are two recitations of “a packet-switched connection,” making it “unclear if they are the same packet-switched connection or a different one.” Id. at 12–13. Third, Petitioner contends that the claims include “another antecedent issue” because “a wireless network” appears twice in the claim. Id. at 13.” slip op. at 81
Patent outcomesUS 8,189,611 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,189,611 - Cradlepoint, Inc. / Honeywell International, Inc. et al. v. Sisvel S.P.A.Some claims unpatentablePTAB · Sep 12, 2022 · IPR2021-00580 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 2, 6, 7, and 8 are unpatentable as anticipated by and obvious over Sachs; claims 3–5, 9, and 10 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level Of Ordinary Skill In The Art Petitioner contends that: A POSITA at or about the time of the alleged invention (January 5, 2006) would have had a degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing wireless radio systems for data transmission and retransmission. Pet. 35 (citing Ex. 1002 ¶¶ 40–53). Patent Owner contends that a person having ordinary skill at the time of invention—January 5, 2006—in the relevant art would be one a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 9 (citing Ex. 2001 ¶ 27). According to Patent Owner, “[a]lthough Patent Owner’s proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties’ contentions as to the level of ordinary skill in the art are similar, and there does not appear to be a dispute that needs to be resolved. We adopt Petitioner’s definition as it appears to be consistent with the specification of the ’396 patent and the cited references. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes “that all claim terms should be accorded their plain and ordinary meaning, as understood by a POSITA and consistent with the specification and file history of the ’396 patent.” Pet. 34–35. Patent Owner “agrees that the claim[] terms should be given their plain and ordinary meaning” and “reserves the right to provide alternate constructions if any of the terms become material to the Board’s decision.” PO Resp. 10. We need not expressly define any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). We note that the parties both implicitly construe claim limitation 1[c], “stopping the timer when the at least one data block is received from the transmitter while the timer is running, in order to prevent a triggering of a status report before the timer expires” similarly. See e.g., infra § III.D.2.” slip op. at 9
- Expert testimonyPatent owner expert discountedDecided for petitioner
“separate ‘reordering procedure,’ to which the timer is tied.” Id. (emphasis added). We agree that the cited evidence in Sachs more closely supports Petitioner’s position that the “timer is stopped when and because the missing PDUs are received,” and not after the occurrence of some additional step in which PDUs in the RLC buffer are shuffled into sequential order. Petitioner persuasively supports its position with, for example, its annotated version of Figure 5, reproduced above, which depicts that the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received––Sachs does not depict or describe an additional step of reshuffling occurring before the timer is stopped. Pet. 41. Patent Owner’s argument that Sachs teaches “a reordering procedure is performed before any other actions are taken” is unavailing because it is not supported by the cited evidence. In support of this argument, Patent Owner’s Declarant, Mr. Regis J. Bates, Jr., offers similar testimony that “the expiry of the timer in Sachs does not trigger a status report as in the ’396 patent, instead a reordering procedure is performed before any other actions are taken,” but does not explain why the reordering procedure takes place before “any other actions.” Ex. 2001 ¶ 53 (citing Ex. 1003, Figs. 4, 5, Abstract, 8:25–31, 9:11–15) (emphasis added). In his Second Declaration, Mr. Bates adds no further detail or explanation and cites the same portions of Sachs. Ex. 2006 ¶ 29. None of the cited portions of Sachs sufficiently supports a finding that Sachs teaches or suggests that “a reordering procedure is performed before any other actions are taken,” as Patent Owner contends and as Patent Owner’s Declarant testifies. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We clarify that limitations 1[c] and 1[d] cannot both occur in response to the same set of stimuli. Limitation 1[c] can be triggered in response to one set of stimuli and limitation [d] can be triggered in response to a different set of stimuli as is shown in Sachs’s figures. In order for Petitioner to prevail, it need only show one of these mutually-exclusive claim limitations to satisfy the claim, as it contends. Petitioner persuasively shows that, under a first theory, with a first set of stimuli, the timer is stopped before it expires and limitations 1[a], 1[b], and 1[c] are performed as shown in Figure 5 of Sachs. Ex. 1003, Fig. 5. Under a second theory, with a different, second set of stimuli, the timer is allowed to expire and limitations 1[a], 1[b], and 1[d] are performed as shown in Figure 4 of Sachs. Id. at Fig. 4. In Petitioner’s annotated version of Figure 4, PDUs 3 and 4 are not received within the time period set by the T_reorder timer––as such, the T_reorder timer expires and a status report acknowledging PDUs up to 14 and negatively acknowledging PDUs 3 and 4 (i.e., indicating that PDUs 3 and 4 are missing) is sent. Pet. 41. In Petitioner’s annotated version of Figure 5, the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received within the time period set by the T_reorder timer and as such, the T_reorder timer is stopped before it can expire. Id.” slip op. at 16
Patent outcomesUS 7,869,396 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,869,396
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.