• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Sep 6, 2024 · IPR2024-00444 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that Saey or Gross taught the claimed composite SNR metric for a service group of cable modems.

  RulingsInstitution decision

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

    “A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in computer or electrical engineering, computer science, information systems, or a similar discipline, along with at least three-to-four years of experience with the design and/or implementation of network-based content delivery systems, such as video-on-demand cable systems and Internet video streaming. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 10 (citing Ex. 1002 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10

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

    “C. Claim Construction We interpret the challenged claims 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), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning.” Pet. 11. Patent Owner does not suggest otherwise. See generally Prelim. Resp. For the purposes of this Decision, we determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

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

    “D. Petitioner Has Not Established Sufficiently That the Prior Art Discloses or Suggests Each and Every Limitation Recited by Independent Claims 1 and 10 Limitations [1D] and [10D] of challenged independent claims 1 and 10 recite “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst-case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” Ex. 1001, 8:10–15 (Limitation [1D]), 9:22–26 (Limitation [10D]). And each ground in this Petition, directly or indirectly, depends on the sufficiency of Petitioner’s contention that either Saey or Gross disclose or suggest that limitation. See Pet. 19–23, 28–31, 52–54, 57–59, 75. After studying the submissions of both parties and the evidence of record, however, we determine there is insufficient support for that contention to satisfy Petitioner’s burden for instituting inter partes review. And because this deficiency is dispositive of the Petition, we focus our discussion below accordingly, after we first provide an overview of Saey and Gross.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,135,682
• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Aug 26, 2024 · IPR2024-00578 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, and 9 were obvious.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a 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.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we deny institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends as follows: The ’826 Patent describes and claims aspects and functionality of cable and satellite television signal processing and communication systems. As of the alleged September 8, 2011 priority date, a person of ordinary skill in the art (“POSITA”) of the ’826 Patent would have had at least: i) a Bachelor of Science in electrical engineering or an equivalent subject and three or more years of experience working in the field of cable and/or satellite signal processing and communication systems; ii) a Master’s in electrical engineering or an equivalent subject and one or more years of experience working in the field of cable and/or satellite television signal processing and communication systems; or iii) a Ph.D. in electrical engineering or an equivalent subject and at least some experience working in the field of cable and/or satellite television signal processing and/or communication systems. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 9 (citing Ex. 1003 ¶¶ 30–31) (internal citation omitted). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 8

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

    “The parties indicate that the district court in the Charter case (2:22-cv-00125) construed “network management messages” in the claims of the ’826 patent to mean “messages which report on the network based on the measured characteristics.” Pet. 10 (citing Ex. 1009, 29); Prelim. Resp. 10. Petitioner contends this construction is consistent with the ordinary and customary meaning of the claim language. Pet. 25. Patent Owner asserts that, in the Cox case (2:23-cv-01049), the parties agreed that “network management messages” should be given its plain and ordinary meaning. Prelim. Resp. 10 (citing Ex. 2001, 2). Patent Owner asserts that its arguments “do not turn on the construction of ‘network management messages’ so there is no need to construe that, or any other, term of the ’826 Patent claims at this stage of the proceeding.” Id. As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10

  • BurdenNot shown unpatentable

    “While Petitioner mentions portions of Renken that it considers relevant to limitation 1h, Petitioner does not explain how it reads each aspect of limitation 1h on Renken. For example, Petitioner does not identify what in Renken corresponds to the “network management messages,” what corresponds to the “measured characteristic of the received signal” that “is different than said network management messages,” and what discloses that the “measured characteristic” is the basis for “controlling transmission of the network management messages” from the “receiver” “back to the headend.” b) Conclusion for Claim 1 Accordingly, Petitioner has not shown a reasonable likelihood to prevail in demonstrating that Renken in view of the general knowledge of a POSITA discloses limitations 1a and 1h of claim 1.7 Thus, we do not reach the parties’ contentions concerning other claim limitations or Renken’s priority date.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 9,825,826
• Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution denied
  PTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute review under 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) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11

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

    “Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. See 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 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,265,096
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless, LLCInstitution denied
  PTAB · Jun 21, 2024 · IPR2024-00318 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5, 7, 8, 10, 12, 14, 17, 18, 20, or 21 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may 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). Upon consideration of the contentions and the evidence of record, we conclude Petitioner does not establish a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims of the ’196 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “that any of the challenged claims of the ’196 patent is unpatentable on the grounds asserted in the Petition.4 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 4 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the either state of the related litigation or the filing of multiple petitions challenging the ’196 patent.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or the equivalent, and at least two years of experience working in the field. Ex. 1003, ¶¶50–51. Less work experience may be compensated by a higher level of education or vice versa. Id. Relevant working experience would include experience with cellular telecommunications and networking, radio-access networking architectures, protocols and signal propagation in wireless networks. Id. 3 Neither party presents objective evidence of nonobviousness. Pet. 3 (citing Ex. 1003 ¶¶ 50–51). Petitioner’s proposal is undisputed. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, we find that Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’196 patent and the asserted prior art references.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner

    “Petitioner states that it “do[es] not believe any term needs to be expressly construed beyond its plain and ordinary meaning.” Pet. 10. Patent Owner agrees that “no explicit claim construction is necessary for the purposes of deciding institution.” Prelim. Resp. 5. For purposes of this decision, we use the plain and ordinary meaning of the terms of the claims. Based on the record before us, we need not make express determinations regarding claim construction to resolve a dispute between the parties. See 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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,554,196
• Crusoe Energy Systems, LLC v. Upstream Data Inc.Institution denied
  PTAB · Mar 29, 2024 · PGR2023-00052 · APJ Matthew S Meyers · PGR · Institution

  Institution was denied because Petitioner did not show it was more likely than not that claims 1–41 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the Petition, Preliminary Response, and the cited evidence, we conclude that Petitioner has not satisfied its burden under 35 U.S.C. § 324 to show that it is more likely than not that claim 1 is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with Petitioner’s articulation of the level of ordinary skill in the art, but does not offer a definition of its own. Prelim. Resp. 5. According to Patent Owner, “[t]his Petition and related declaration propose two alternative levels of ordinary skill in the art, where the second alternative does not require any formal education or any experience in the field of oil or gas production.” Id. While Patent Owner disagrees with Petitioner’s characterization of the level of ordinary skill in the art, Patent Owner does not explain how a different level of skill is likely to alter Petitioner’s analysis. Instead, Patent Owner contends that it “applied Petitioner’s articulation and confirmed the analysis detailed below would not change based on disagreements over the level of ordinary skill in the art.” Id. (citing Ex. 2101 ¶¶ 16–17). 8 To the extent necessary, and for purposes of this Decision, we accept Petitioner’s statement on the level of skill in the art. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8

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

    “Because the meanings of the claim terms “blockchain mining devices,” “mining processor,” and “adapted to mine transactions” are inextricably linked with Petitioner’s indefiniteness grounds, we will address the meaning of those terms in the context of the parties’ arguments to the extent necessary to resolve the controversy as set forth below in Section III.C. Similarly, we will address the parties’ arguments regarding the disputed means-plus-function limitations in our discussion of 35 U.S.C. § 112(f) as set forth below in Section III.E. 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

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Not shown unpatentable

    “To satisfy the definiteness requirement of § 112(b), a patent’s claims must, when “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910. We are not persuaded that the Petition shows that it is more likely than not that Petitioner would prevail in demonstrating that the term “blockchain mining devices,” as recited by independent claims 1 and 24, is indefinite. As an initial matter, we agree with Patent Owner that “Petitioner’s indefiniteness theory is flawed because its ‘alternative interpretations’ are of its incorrect claim construction rather than the claim language in view of the specification as required by Nautilus.” Prelim. Resp. 13. We find the Specification informs, with reasonable certainty, those skilled in the art about the meaning of the term “blockchain mining devices.” The 18 Specification informs us that “each blockchain mining device 12 may be composed of suitable components. The blockchain mining device 12 may have a network interface, such as network equipment 88, and one or a plurality of mining processors 92 (92A-92E for example).” Ex. 1001, 15:21–25. And, claim 1 recites that the “blockchain mining devices [are] connected to the generator” and “each have a mining processor and are connected to a network interface.” Id. at 19:59–62. Thus, reading the term “blockchain mining devices” in light of the language of the claim and the Specification, an ordinarily skilled artisan would have understood “blockchain mining devices” to mean a device composed of, for example, a network interface and one or more processors. Id. at 15:21–25, 19:59–62.” slip op. at 18

  Claim construction§ 112 disclosureDiscretionary denial
  Patents in suitUS 11,574,372
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 25, 2024 · IPR2023-01314 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17

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

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’553 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 43–48.” slip op. at 30

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

    “Regarding the preambles of independent claims 1 and 22, as well as the claim term “excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation,” Petitioner asserts that it “applies the claim construction previously adopted by the district court in the co-pending litigation.” Pet. 9–10. Petitioner asserts that “the parties agreed that the preambles of independent claims 1 and 22 are limiting, and the district court adopted this construction in its order.” Id. at 9–10 (citing Ex. 1011, 2 (district court claim construction order)). Petitioner also asserts that “the district court adopted Patent Owner’s preferred construction of [‘excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation’]: ‘excluded volume in space that is common to both the first and second 3D representations where no surface from either of the 3D representations should be present.” Id. at 10 (citing Ex. 1011, 2). Patent Owner does not respond other than to repeat Petitioner’s assertions regarding the district court’s claim constructions. Prelim. Resp. 9. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,064,553
• Medit Corporation v. 3shape A/SInstitution denied
  PTAB · Mar 22, 2024 · IPR2023-01313 · APJ Michelle N Wormmeester · IPR · Institution

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

  RulingsInstitution decision

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

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 33

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

    “We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,629,551
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution denied
  PTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a master’s degree in electrical engineering, computer engineering, computer science, or a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,099,383
• Advanced Lighting Concepts LLC v. Mate LLC.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01257 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–3, 5, 7, 13, 15, or 21 unpatentable.

  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 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 inter partes review of” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “art depicted in Figure 5 (relied upon for claim element 1(b)) either relates to or can be combined with Shteynberg’s discussion of its Figure 10 embodiment depicting capacitor 345 (relied upon for claim element 1(d)). For a prior art reference to anticipate a claim, it “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For example, in Net MoneyIN, the Federal Circuit held that an “Internet payment system” was not anticipated by a prior art reference that disclosed all the components of the invention, because the reference disclosed two separate payment protocols, each of which contained only a subset of the components claimed in the patent at issue. Id. at 1371. “[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. at 1371 (citation omitted). Here, Petitioner relies upon two disparate disclosures without any indication as to how these disclosures could be combined. Second, Petitioner has not sufficiently shown that capacitor 345 functions as an inrush current limit or that Shteynberg discloses a “power factor correction (PFC) boost connected to the inrush current limit” as required by claim element 1(d). Petitioner and its declarant have clearly stated that a person having ordinary skill in the art “would readily understand that using a resistor in series with a capacitor to limit inrush current as described in Shteynberg is analogous to the inrush current limit of the ‘446 [p]atent.” Pet. 17 (emphasis added); Ex. 1002 ¶ 57. Neither Petitioner nor its declarant make any persuasive argument that a capacitor only, such as capacitor 345, can constitute an inrush current limit. Indeed, Mr. McAlexander provides no testimony that a capacitor alone can constitute an inrush current limit, let alone that Shteynberg discloses an inrush current limit that is connected to power factor correction (PFC) boost as required by claim element 1(d). See Ex. 1002 ¶¶ 53–61 (providing testimony that Shteynberg anticipates claim 1 but not discussing the inrush current limit of claim element 1(d)). Indeed, Petitioner does not include any citations to Mr. McAlexander’s declaration to support its contention that Shteynberg discloses an inrush current limit as required by claim element 1(d). See Pet. 19–22. Thus, Petitioner has not provided persuasive evidence or argument that Shteynberg’s Figure 10 discloses an inrush current limit, let alone an inrush current limit that is connected to a power factor correction (PFC) boost. As noted above, Petitioner has provided no persuasive argument as to how Shteynberg’s disclosures regarding its discussion of the resistor in series with a capacitor shown in prior art Figure 5 can be combined with Shteynberg’s disclosures regarding its inventive embodiment of Figure 10. Thus, we find that Petitioner fails to demonstrate a reasonable likelihood that Shteynberg discloses the recited inrush current limit as required by claim 1.” slip op. at 15

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner’s declarant, Mr. McAlexander, testifies that a person having ordinary skill in the art (“POSITA”) to which the ’446 patent pertains, would have “at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with power regulation devices, like LED drivers and dimmers.” Ex. 1002 ¶ 31. Patent Owner, having waived its Preliminary Response, does not contest Petitioner’s articulation of the level of skill in the art. Paper 7. We regard Petitioner’s definition as consistent with the prior art before us and the skill reflected in the Specification of the ’601 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art may reflect an appropriate level of skill). Thus, for the purpose of this Decision, we apply Mr. McAlexander’s definition.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,525,446
• Advanced Lighting Concepts LLC v. Mate, LLC.Institution denied
  PTAB · Feb 13, 2024 · IPR2023-01258 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over Shteynberg alone or with Kim or Morgan.

  RulingsInstitution decision

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

    “III. CONCLUSION Based on the information presented, we determine, for the reasons provided above, that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the Challenged Claims. Accordingly, we decline to institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that an inter partes is not instituted.” slip op. at 27

  • BurdenNot reached

    “testimony and find that Petitioner fails to demonstrate a reasonable likelihood that Shtenynberg discloses the recited inrush current limit. First, to the extent that Petitioner relies on the disclosure in Shteynberg’s Figure 5 beyond background support for Petitioner’s contentions, such reliance is misplaced. Shteynberg’s Figure 5 depicts a prior art current regulator (or converter). Ex. 1005, 3:36–55, 7:24–25, Fig. 5 (labeled as “PRIOR ART”). Indeed, in describing its invention, Shteynberg discloses first and second embodiments of its current regulator (or converter). Id. at 8:52–9:26, Figs. 6, 7. This description of Shteynberg’s first and second embodiments does not mention inrush current limiters. To anticipate, Shteynberg must disclose “every element of the claimed invention arranged as recited in the claim.” Net MoneyIN, Inc., 545 F.3d at 1369 (holding that, to anticipate, the prior art reference must not only disclose all element of the claim within the four corners of the document, but must also discloses those elements “arranged as in the claim”) (internal citation omitted).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner’s declarant, Joseph McAlexander, testifies that a person having ordinary skill in the art to which the ’759 patent pertains “would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with power regulation devices, like LED drivers and dimmers.” Ex. 1002 ¶ 31. We apply this definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’759 patent, based on our review of the limited record.” slip op. at 13

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

    “Petitioner states that “[e]ach claim term challenged by this Petition should be construed in accordance with its ordinary and customary meaning for purposes of resolving the issues raised in this Petition.” Pet. 16. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See 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 14

  Claim constructioncites KSR · Graham
  Patents in suitUS 9,049,759

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.