• Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution denied
  PTAB · Apr 13, 2023 · IPR2022-01506 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that de Heer, alone or with Cameron and Fuehren, rendered claims 1, 3, 4, 16, and 22 obvious.

  RulingsInstitution decision

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

    “provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’164 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

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

    “We are persuaded Petitioner has not shown that de Heer teaches the recited association. Patent Owner is correct that the claim language requires the association of identifiers: the first set-top box identifier and the first online access identifier are associated. Ex. 1001, 24:65–66. Petitioner relies on the theory that de Heer’s IP address assignment teaches the claim limitation. But de Heer’s IP address, as noted by Patent Owner, corresponds to either a single IP address or to a range assigned to a particular household. See Prelim. Resp. 11–12. Having a common IP address or an IP address in an assigned range, however, does not itself teach the recited association of identifiers. De Heer does not describe the “common IP address” as a way to associate two identifiers. Indeed, as Patent Owner points out, de Heer determines that the client corresponds to a particular household without describing any associations being used by the database to locate the interaction data or the advertisement. See id. And Petitioner’s assertion that the advertising service associates the two devices merely because of a “common IP address” is insufficient by itself for de Heer to teach the claim limitation. See Pet. 26–27 (stating “that determining that STB and computer have a common IP address as “seen” by online advertising service 110, the online advertising service 110 associates the two devices”).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with Internet or similar network-related processes and/or systems including, for example, online content delivery, such as targeted advertisements, or a related field,” but that “[m]ore education can supplement practical experience and vice versa.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. At this stage of the proceeding, and given the lack of dispute concerning the proposed level of ordinary skill in the art, we adopt Petitioner’s assessment, which at this juncture appears reasonable given the specification of the ’164 patent and asserted prior art of record. B. slip op. at 8

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

    “Patent Owner agrees that claim construction is not necessary to resolve any issue for institution and that the plain and ordinary meaning of the claim language should be applied.” Prelim. Resp. 7. At this stage of the proceeding, there is no dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,566,164
• Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Mar 13, 2023 · IPR2022-01324 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 9–12 unpatentable over Beyda alone or in combination with Narin and Detering.

  RulingsInstitution decision

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

    “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) (2018). For the reasons provided below, we determine based on the record before us that there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

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

    “We need not provide an explicit construction for “BT company,” nor an explicit construction for “third party computer system.” The parties agree that the claimed “BT company” and the claimed “third party” are distinct entities, in other words, the BT computer system is controlled by a distinct entity from the entity that operates the third party computer system controlling advertising space. See Pet. 22 (“‘BT company’ . . . means ‘an entity that targets ads for placement in advertising space controlled by another party . . . .’” (italics added), Ex. 1001, 14:13–15 (“a third party computer system controlling advertising space.” (italics added)); Pet. 33 (citing Ex. 1015, 44). The prosecution history and ’615 Patent Specification support the distinction between the BT company and third party. See Ex. 1001, 8:56–63, 9:23–46, 9:66–10:19; Ex. 1004, 102 (cited by Pet. 19).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’615 Patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user profile management and/or web-based targeted content delivery, or a related field. A person could have qualified with more formal education and less technical experience, or vice versa. Pet. 20 (citing Ex. 1002 ¶¶ 8–13). “Patent Owner does not challenge that definition.” Prelim. Resp. 4. 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 ’615 Patent Specification and the asserted prior art.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “Based on the record before us, Petitioner does not set forth sufficient argument and evidence to demonstrate that Beyda discloses “[a] computer system controlled by a behavioral targeting company (BT company),” as recited in the preamble, and “a third party computer system controlling advertising space,” as recited in the first limitation of claim 9. See Pet. 22–23, 27–39. As explained above in Section II.A., both parties agree that the BT company and third party are distinct entities. As highlighted above in Section II.A., Petitioner asserts that a “BT company” means “an entity that targets ads for placement in advertising space controlled by another party.” Pet. 22–23 (emphasis added). Petitioner does not direct us to where Beyda discloses a computer system controlled by a first entity that is distinct from the third party (i.e., another party) operating the computer system controlling advertising space. See Pet. 27–39; Prelim. Resp. 10. We agree with Patent Owner that the Petition’s assertion of a distinction between Beyda’s data warehouse and Beyda’s targeting engine, external content computer components performing the operations of the targeting engine and the data warehouse. See Pet. 33–34; Prelim. Resp. 9–10. Therefore, the Petition does not establish that Beyda’s data warehouse is controlled by a first entity that is distinct from the entity (i.e., another party, third party) operating Beyda’s targeting engine, external content servers, and web servers controlling advertising space. To the extent that the Petition asserts that Beyda inherently discloses “[a] computer system controlled by a behavioral targeting company (BT company)” and “a third party computer system controlling advertising space,” we do not agree. The Petition’s assertion that “[t]o a [person of ordinary skill in the art], the description of this functionality [(extractor program, targeting engine program, data warehouse)] existing on multiple servers teaches that one or more parties could operate portions of what Beyda describes as system 10” is insufficient because inherency cannot be established by possibilities and probabilities. Pet. 29 (bolding and underlining added); see Therasense, 593 F.3d at 1332. For these same reasons, we also find insufficient the Petition’s assertion that a person of ordinary skill in the art “would have further understood Beyda to teach that Beyda’s system embodiments could be controlled by a behavioral targeting company.” Pet. 32 (bolding and underlining added).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,830,615
• ROKU, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution denied
  PTAB · Nov 29, 2022 · IPR2022-00953 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including because Whitehead’s relied-on association used PII.

  RulingsInstitution decision

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

    “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 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) (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) (2021).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art (“POSITA”) “would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements,” and that more experience might compensate for less formal education or vice versa. Pet. 9 (citing Ex. 1003 ¶ 15). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. For purpose of this proceeding, we adopt the Petitioner’s proposed level of skill.” slip op. at 9

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

    “At this juncture, we do not discern a dispute between the parties regarding the meaning of any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • BurdenNot shown unpatentable

    “shows how RI mytes from different devices on the same network can be automatically associated—as seen in Blocks 340 and 360—without using PII. See Pet. 42–48; see also id. at 42–43 (“Specifically, as shown in FIG. 5 below, Whitehead describes using IP access session information to associate devices and their RI-mytes.”), 45 (“Using the corresponding IP access session information, the associated usage data and device identifiers are associated to the same user ID (e.g., ‘User1,’ ‘User2,’ and ‘User3’ respectively) representing the corresponding user profile.”). However, Whitehead Figure 5 uses PII in making that association.” slip op. at 17

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 8,566,164
• ROKU, Inc. v. Almondnet, Inc And Intent Iq, LLCInstitution denied
  PTAB · Nov 29, 2022 · IPR2022-00959 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted combinations.

  RulingsInstitution decision

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

    “3. Analysis of Independent Claim 1 Based on the current record, Petitioner does not sufficiently show that the combination of Madhavan and Whitehead teaches or suggests “wherein the first online user interface device identifier and the first set-top box identifier are associated without using personally identifiable information pertaining to a user of the set top box that corresponds to the first set-top box identifier,” as recited in claim 1.” slip op. at 13

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

    “To the extent Petitioner asserts that the combination of an IP address and a timestamp is sufficient to associate two device identifiers without using PII,8 Whitehead’s Figure 5 does not expressly show making an association between RI-mytes based on timestamps without using User IDs. See Ex. 1015, Fig. 5. Rather, as discussed above, RI-mytes are associated in block 340 of Figure 5 with the “User ID” field. See Id. ¶ 114, Fig. 5. Moreover, Petitioner does not specifically explain why one with ordinary skill in the art would modify the embodiment of Whitehead’s Figure 5 to perform an association using a timestamp but without using a User ID. See Pet. 39–44. We also agree with Patent Owner’s following additional arguments: (1) certain other portions of Whitehead cited by Petitioner regarding anonymous techniques that use non-PII are unrelated to the Figure 5 embodiment; and (2) Petitioner fails to explain why one with ordinary skill in the art would modify Figure 5 to make associations between device identifiers without using PII. See Prelim. Resp. 15–19. Petitioner’s general reliance on Whitehead’s various disclosures regarding the use of non-PII information is insufficient to show that the combination of Madhavan and Whitehead teaches the disputed limitation. See Pet. 43–44. In particular, Petitioner relies on Whitehead’s disclosure that “[t]he distinction between” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements.” Pet. 9 (citing Ex. 1003 ¶ 15). According to Petitioner, “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for [a person of ordinary skill in the art].” Id. (citing Ex. 1003 ¶ 15). Patent Owner does not comment on Petitioner’s definition and does not offer an alternate definition. See Prelim. Resp. 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 ’069 Patent Specification and the asserted prior art.” slip op. at 7

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,595,069
• Meta Platforms, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00929 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Amjadi teaches or suggests the claimed first Internet site, as required by every challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We recognize that the claim recites an “Internet site,” and not a “Web site.” Although the ’586 patent sometimes describes an “Internet site,” see Ex. 1001, 4:48–49, 5:22, 16:7, 17:2, 17:11, the patent more frequently describes an “Internet web site” or “web site,” suggesting the inventors understood “Internet site” and “web site” to be synonymous. See, e.g., id. at 2:6, 2:17, 2:20, 2:32, 2:39, 2:65, 3:31, 3:34, 3:35, 3:36, 3:38. In addition, the specification describes the saturation problem addressed by the ’586 patent as one experienced by Web sites. Id. at 6:4–8 (“A media may reach this saturation level due to pragmatic considerations such as limited physical size or space. In addition, saturation may occur due to a requirement to limit the cost of a producing a Web site, magazine, newspaper or other media application.”) One technical dictionary defines “Web site” as “[a] group of related HTML documents and associated files, scripts, and databases that is served up by an HTTP server on the World Wide Web.” Microsoft Computer Dictionary 564 (2002). Ex. 3001. Another states: “In more common usage [Web site] refers to individual sets of Web pages that can be visited with Web Browsers.” Newton’s Telecom Dictionary 913 (2004). Ex. 3002. Merriam-Webster defines Web site as “a group of World Wide Web pages usually containing hyperlinks to each other and made available online by an individual, company, educational institution, government, or organization.” See https://www.merriam-webster.com/dictionary/web%20site (last accessed Oct. 14, 2022). From these definitions, and consistent with the ’586 patent specification, we determine that an Internet site is a collection of HTML Web pages that can be accessed by users with Web browsers.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site. As discussed, only two functions of the Incentive Host Server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 16–18.4 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,244,586
• Google LLC v. Express Mobile, Inc.Institution denied
  PTAB · Oct 4, 2021 · IPR2021-00700 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood of proving claim 1 obvious over Jammes and Lindholm.

  RulingsInstitution decision

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

    “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; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Having considered the parties’ arguments and evidence, we determine that Petitioner has not met its burden of showing that Jammes’ product relationship information are settings, or attributes of an object available for selection, that describe elements on a website. We discern three deficiencies in Petitioner’s showing. First, Petitioner has not demonstrated sufficiently that Jammes’ product relationship information are “settings” or “attributes of an object.” This relationship information reflects inventory organization information, akin to areas of a back storeroom that are organized by product type. See Ex. 1007, Fig. 7D (depicting folders identifying areas of a store organized by product type, e.g., “Automotive” is organized separately from “Computer,” which is organized separately from “Clothing”); Prelim. Resp. 26 (“Jammes merely shows the product relationships in a folder hierarchy.”). Petitioner has not shown how inventory organization information is an “attribute of an object” like, e.g., font style as disclosed in the ’397 patent. See Ex. 1001, Fig. 37.” slip op. at 15

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Patent Owner states only that “[d]istrict courts have repeatedly construed ‘settings’ as ‘an attribute of an object available for selection.’ Petitioner does not dispute this construction, and in fact purports to analyze the asserted references in view of this construction.” Prelim. Resp. 25 (citing Ex. 2016, 10; Ex. 2017, 13; Ex. 2018, 6). Patent Owner does not dispute this construction of the term. Id. In accordance with the parties’ briefing, we apply the previous district courts’ construction of “settings” as “an attribute of an object available for selection.” Pet. 35–36; Prelim. Resp. 25. Based on our analysis of the issues in dispute at this stage of the proceeding, we agree that no further claim term requires express construction. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with programming relating to websites.” Pet. 16 (citing Ex. 1002 ¶¶ 15–16). Alternatively, “[m]ore education can supplement practical experience, and vice-versa.” Id. Patent Owner identifies the appropriate level of skill in the art as that possessed by a person having “a bachelor’s or graduate degree in computer science, mathematics, engineering, or a similar discipline together with knowledge of software development and web design, together with approximately two or three years of experience,” where education and experience “are on a sliding scale relative to each other.” Prelim. Resp. 10– 11 (citing Ex. 2001 ¶ 19). According to Patent Owner, “[t]he analysis herein is the same for both Petitioner’s definition of a [person of ordinary skill in the art] and that of Patent Owner’s.” Id. at 11. For purposes of this Decision, we adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,546,397
• Supercell OY v. Gree Inc.Institution denied
  PTAB · Jul 7, 2021 · PGR2021-00034 · APJ Hyun J Jung · PGR · Institution

  The Board denied institution of PGR on all challenged claims under § 324(a), finding the Fintiv factors collectively favored denial because of duplication and the risk of inconsistent results.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied

    “The record clearly shows that, if post-grant review were instituted in this proceeding, a final written decision would be due more than eleven months after the trial date in the parallel district court proceeding. Ex. 2011, 1. Given the overlap in claims, prior art, and arguments as described below, institution would create a potential for the district court proceeding and the post-grant review to arrive at inconsistent results spaced months apart.” slip op. at 12

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “III. PETITIONER’S MOTION TO SEAL Petitioner moves to seal Exhibit 1007. Paper 3. Because we did not rely on Exhibit 1007 for our decision, we dismiss as moot Petitioner’s Motion to Seal Exhibit 1007 and for Entry of Protective Order.” slip op. at 22

  Discretionary denial
  Patents in suitUS 10,610,771
• Cradlepoint, Inc. / Dell Inc. et al. v. Sisvel International S.A.Institution denied
  PTAB · Jan 12, 2021 · IPR2020-01069 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 17–19, 21, and 22 obvious over the asserted grounds.

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’803 Patent. Accordingly, we do not grant Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Considering the subject matter of the ’803 Patent, the background technical field, and the asserted prior art, we preliminarily agree with Petitioner’s proposed qualifications for an ordinary level of skill. Our view is that a bachelor’s degree in electrical engineering or a similar discipline would have provided sufficient educational background in light of the technology at issue in the ’803 Patent and asserted prior art. Patent Owner does not argue that a person having ordinary skill in the art would have lacked understanding of what would have been considered a discipline “similar” to a bachelor’s degree in electrical engineering. Prelim. Resp. 7–8; Ex. 2001 ¶¶ 18–21. Further, we preliminarily agree that having three years of relevant industry or research experience (or additional education), including experience with cellular telecommunication systems, including experience designing or implementing user equipment or network equipment or signaling protocols and designing and configuring user and network equipment to enable re-establishment of radio communications is commensurate with the scope of the patent at issue and the asserted prior art. Patent Owner’s proposal asserts merely that the skilled artisan would have had “practical experience in the field,” but “would not have needed to have been a member of a standards organization such as 3GPP.” Prelim. Resp. 7– 8 (citing Ex. 2001 ¶ 20). Patent Owner’s proposal does not set forth sufficient details as to what constitutes “practical experience” and Patent Owner’s statement regarding that lack of a requirement for membership does not reflect that the skilled artisan would have had knowledge regarding certain 3GPP standards, as described in the background of the ’803 Patent. Ex. 1001, 1:45–48, 1:66–2:5. Regarding Petitioner’s proposal, however, we do not adopt “at least” three years of relevant industry or research experience because “at least” is vague.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “Claims that include the language “means” or “means for” are presumed to invoke 35 U.S.C. § 112, ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“[U]se of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.”).6 Because the issues before us turn on elements of the claim other than the disputed structural element for the term “means for detecting a failure in a radio connection,” we need not make a determination regarding that term. For the other means-plus-function terms recited in claim 17, we use Petitioner’s constructions (Pet. 15–16), which are not disputed by Patent Owner (Prelim. Resp. 8–9).” slip op. at 13

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

    “In view of the issues we address below, we determine that it is not necessary to provide an express interpretation of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 13

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,751,803
• Sotera Wireless, Inc. v. Masimo CorporationInstitution denied
  PTAB · Dec 2, 2020 · IPR2020-01082 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution for claims 1–8 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The 3 Patent Owner has not presented objective evidence of non-obviousness. burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Although the record reflects certain disputes regarding the claim language, it is not necessary for us to resolve those disputes in order to determine whether Petitioner has satisfied its burden of demonstrating a reasonable likelihood of prevailing. See also Pet. 16–19 (construing the claim terms “alarm condition” and “alarm notification delay time,” but stating that the “Board need not construe these terms because the claims are invalid under either [parties’ proposed] interpretation”); Prelim. Resp. 27–31 (agreeing that “the Board does not need to construe any claim terms for purposes of deciding whether to institute the Petition,” but also arguing that Petitioner failed to identify corresponding structure for the purported meansplus-function term, “reporting module”). Accordingly, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems,” wherein “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 15 (citing Ex. 1003 ¶¶ 41–43). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 10

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

    “Moreover, Petitioner provides insufficient reasoning to show that a skilled artisan would have been motivated to modify Lynn’s system to implement Kalkman’s simulation. We agree with Patent Owner that such a modification would render Lynn unsuitable for its intended purpose as an oximeter testing apparatus. Prelim. Resp. 46–47. For example, Petitioner does not explain how Lynn’s system would achieve its intended purpose of testing the responsiveness of an oximeter if the system were modified to simulate pre-alarm delay times instead of respiratory arrest. See, e.g., Pet. 43 (“[A] PHOSITA would have been motivated to modify the system of Lynn to use the pre-alarm delay time simulation of Kalkman to achieve the predictable result of optimizing pre-alarm delay times and reducing false and transient alarms.”). Neither Petitioner nor Dr. Yanulis explain why a person of ordinary skill in the art would have been motivated to abandon Lynn’s intended purpose as an oximeter testing apparatus, even if such a combination would have resulted in the optimization of pre-alarm delay times, as Petitioner contends. Pet. 42–44; Ex. 1003 ¶¶ 110–113. Petitioner does not discuss this trade-off in functionality or intended purpose at all.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,255,994
• Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution denied
  PTAB · Oct 1, 2018 · IPR2018-00880 · APJ Amanda F Wieker · IPR · Institution

  The Board denied institution for all challenged claims under § 314(a), applying the General Plastic factors to find that the later-filed petition presented a tactical filing concern.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “Petitioner had access to Patent Owner’s Preliminary Response in the –00005 IPR (filed January 12, 2018), and to the Board’s Decision denying institution of that petition (filed March 20, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’090 patent. See Prelim. Resp. 13–15. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11

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

    “inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’090 patent.” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,474,090

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.