- PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,094,868 - PTAB · Aug 26, 2024 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1 and 5–8, on all asserted grounds, after finding a reasonable likelihood of success on the Li, Wu, and Paunikar challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed in showing that at least one of the challenged claims is unpatentable on the following challenges to patentability, including: Claims 1 and 5–8 as unpatentable over Li, Paunikar, and Wu. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’845 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan) as having “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking, including experience with the IPv4 and IPv6 protocols, or a related field,” and noting that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003, Bhattacharjee Decl. ¶ 62). Patent Owner does not contest Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 19. The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As the level of skill agreed to by the parties appears commensurate with the subject matter of the ’845 patent and the references, we apply this description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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)). slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003, Bhattacharjee Decl. ¶ 201. For example, the ’845 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21, Ex. 1003 ¶ 201; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 78–79 (citing Ex. 1003, Bhattacharjee Decl. ¶ 207). As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 79–80 (citing Ex. 1003, Bhattacharjee Decl. ¶ 211). Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 76–80; Ex. 1003 ¶¶ 199–212. On this record, Petitioner shows sufficiently that an ordinarily skilled artisan would have had reason to combine the cited teachings of Li and Wu.” slip op. at 51
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,451,845 - PTAB · Aug 8, 2024 · IPR2024-00485 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that claims 1–10 would have been obvious over Li and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Petitioner notes that several claim terms previously were construed by a district court in another case. Pet. 10–14 (citing Ex. 1036). Patent Owner proposes construing the term “domain” to mean “a network or subnetwork and its address space that are under common control.” Prelim. Resp. 19–21. Petitioner disagrees with Patent Owner’s proposed construction of the term “domain.” Pet. 31. We determine that no claim terms require express construction for purposes of this Decision. As discussed below, even if we assume that the term “domain” means “a network or subnetwork and its address space that are under common control,” Petitioner shows sufficiently that at least one of the challenged claims is unpatentable. See Section II.E.1. As a result, we need not resolve the parties’ dispute about the meaning of the term “domain” for purposes of this Decision. See 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.’”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“As discussed above, Petitioner presents evidence that although Li-2 “never became an official Internet-Draft published in the IETF directory,” Li-2 remained in the IETF’s staging folder. Pet. 20–22; Ex. 1009 ¶¶ 10–11. But the evidence of record indicates that the IETF’s staging folder may contain thousands of documents. Prelim. Resp. 35; Ex. 1008 ¶ 4; Ex. 1044. This raises the issue of whether a person of ordinary skill in the art exercising reasonable diligence could have located Li-2 simply by browsing the filenames of the numerous documents in the IETF’s staging folder. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response. Petitioner also presents evidence that the IETF’s Datatracker included Li-2 for “a given period” after the authors canceled Li-2. Pet 22; Ex. 1008 ¶ 11. But Petitioner does not indicate how long the IETF’s Datatracker would have included Li-2 (e.g., hours, days, weeks, years). See Pet. 22; Prelim. Resp. 36; Ex. 1008 ¶ 11. This raises the issue of whether Li-2 was present in the IETF’s Datatracker such that a person of ordinary skill in the art exercising reasonable diligence could have located Li-2. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response.” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003 ¶¶ 213–214. For example, the ’844 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21; Ex. 1003 ¶ 213; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 69; Ex. 1003 ¶ 210. As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 68–69; Ex. 1003 ¶ 207. Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 69–70; Ex. 1003 ¶¶ 210–211.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,451,844 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that the Cook and Bennett combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 6 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,912,687 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1–9, 11–24, 26, 28, 29, and 31–34 on all asserted grounds because Petitioner showed a reasonable likelihood that at least one claim is anticipated by Grotmol.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that the projected trial date (at least five months after the projected statutory deadline for a final written decision), the parties’ minimal investment in the District Court Litigation, and Petitioner’s stipulation all weigh against (or at least slightly against) discretionary denial of institution. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood of prevailing in showing that claims 1–9, 11–24, 26, 28, 29, and 31–34 are anticipated by Grotmol. III. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Accordingly, we institute an inter partes review on all grounds of unpatentability in the Petition. At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. IV. ORDER It is hereby ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–9, 11–24, 26, 28, 29, and 31–34 of the ’583 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, [a] person having ordinary skill in the art . . . relevant to the ’583 patent as of November 26, 2017—the earliest possible priority date of the ’583 patent—would have had at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 4. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4. Patent Owner does not dispute Petitioner’s proposed construction at this stage of the proceeding. Prelim. Resp. 6. As a result, for purposes of this Decision, we need not determine whether Petitioner identifies sufficient corresponding structure for the above limitations. See 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 12
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 11,055,583 - PTAB · Nov 27, 2023 · IPR2023-00902 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds after 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
“An inter partes review may not be instituted unless “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). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a degree in electrical engineering, computer science, or a similar discipline, with at least 2–4 years of relevant industry or research experience in the network security industry,” as well as “familiarity with the wireless standards and protocols relating to mobile communications and the security of such communications.” Pet. 11–12 (citing Ex. 1003 ¶¶ 65, 66, 68). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Angelos Keromytis. Ex. 1003 ¶¶ 63–68. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Petitioner does not propose an express construction for any claim terms. Pet. 15. Patent Owner proposes construing the term “validity period” such that it “cannot be a single point in time.” Prelim. Resp. 10. Patent Owner also proposes construing the phrase “if the initiation key is deemed valid, generating a session key,” to mean that generating a session key “must be premised upon the initiation key having had its validity verified ‘based on a current time.’” Id. at 12. As discussed below, on this record, Petitioner shows sufficiently that the asserted prior art teaches the disputed limitations of the challenged claims even under Patent Owner’s proposed constructions. See Section II.C.1. Thus, at this stage of the proceeding, we need not address Patent Owner’s claim construction arguments in order to resolve the parties’ disputes about the asserted grounds of unpatentability.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“3. Reason to Combine Petitioner argues that a person of ordinary skill in the art would have had reason to combine the cited teachings of Teo and Madoukh. Pet. 16–17 (citing Ex. 1003 ¶ 103). In particular, Petitioner presents evidence that a person of ordinary skill in the art “would have been motivated to combine Teo’s system for receiving and using keys with associated lifetimes with Madoukh’s ‘key lifetime manager’ for monitoring the expiration of keys, requesting new keys when old keys have expired, and deactivating expired keys.” Id. at 16 (emphases omitted). For example, a person of ordinary skill in the art “would have understood that Teo’s DMK would expire . . . and one would need to implement a component for tracking the DMK’s expiration, requesting a new DMK upon such expiration, and deactivating the expired DMK, such as Madoukh’s key lifetime manager.” Id. at 17 (citing Ex. 1003 ¶ 103) (emphases omitted). Petitioner also presents evidence that a person of ordinary skill in the art “would have reasonably expected success when combining Teo and Madoukh.” Id. (citing Ex. 1003 ¶ 104) (emphases omitted). At this stage of the proceeding, Petitioner shows sufficiently that it would have been obvious to combine the cited teachings of Teo and Madoukh.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 9,438,572 - PTAB · Oct 12, 2023 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Institution
The Board instituted review of claims 1–3, 6–18, 21–24, and 27–29 on all asserted grounds, finding a reasonable likelihood of obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Patent Owner has not persuaded us to exercise our discretion to deny institution. Accordingly, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, 8. We focus our analysis on Ducharme, one of the primary references asserted in the Petition. Although Ducharme was “not before the Office during examination of the [’]895 Patent,” Patent Owner asserts that it is cumulative to a reference that “was presented to the Office during examination by IDS.” Prelim. Resp. 42–43. Patent Owner does not point to, and we have not found, any evidence showing discussion or application of the previously presented reference by the Examiner during prosecution of the ’895 patent or its related patents. In other words, “the record of the Office’s previous consideration of the art is not well developed or silent.” Advanced Bionics, 10. In such situations, “a petitioner may show the Office erred by overlooking something persuasive.” Id.; see also id. at 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). On this record, Petitioner has shown sufficiently that the Examiner overlooked Ducharme’s teachings of the limitations that were the basis for allowing the challenged claims. Indeed, the Examiner allowed the challenged claims, stating that the closest prior art references lack the teachings of the emitted light being suitable for the commercial image recording when the emitted light is simultaneously at least 1000 lumens when either the first or the second LEDs are lit, is broad-spectrum white light having a color deviation corresponding to less than 5 points of both green and magenta of color compensation, and has a color rendering index of light emitted from each of the first or the second LEDs (whichever is lit) that is greater than 90. Ex. 1002, 150. Petitioner’s evidence indicates that Ducharme teaches an LED light suitable for commercial image recording that includes a plurality of first white LEDs having a first spectrum and a plurality of second white LEDs having a second spectrum. See, e.g., Ex. 1005, 4:1–7. Petitioner’s evidence also indicates that a person of ordinary skill in the art would have had reason to select first white LEDs with a daylight spectrum and second white LEDs with a tungsten spectrum. See, e.g., Ex. 1003 ¶ 449; Ex. 1006 ¶ 53. Further, Petitioner’s evidence indicates that LEDs satisfying the light quality parameters recited in the challenged claims were known to those of ordinary skill in the art. See, e.g., Ex. 1003 ¶ 480; Ex. 1005, 25:36–43; Ex. 1007, 7:11–15; Ex. 1008, 4:1–3. Thus, the evidence cited in the Petition demonstrates that the Office” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; Prelim. Resp. 14. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to address the construction of any claim term.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s definition of the skill level at this stage of the proceeding. Prelim. Resp. 13. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,566,895 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Sep 7, 2023 · IPR2023-00581 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 2–6, 11, 14, and 16 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, Patent Owner argues that Angelot previously was presented to the Office during prosecution of U.S. Application No. 14/938,056 (“the ’056 application”), which is “a child of the ’772 [p]atent.” Prelim. Resp. 24, 64–65. Specifically, Patent Owner contends that the Examiner of the ’056 application issued a rejection based on Angelot, and Patent Owner “overcame that rejection.” Id. at 64–65. However, “[u]nder § 325(d), the art and arguments must have been previously presented to the Office during proceedings pertaining to the challenged patent.” Advanced Bionics, Paper 6 at 7 (emphasis added). Here, Patent Owner at most presents evidence that Angelot previously was presented to the Office during proceedings pertaining to an application that claims priority to the ’772 patent. Prelim. Resp. 63–65. Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. See id. Second, Patent Owner argues that Petitioner’s evidence that relaying was known in the art is “cumulative of art cited by [Patent Owner] and considered by the Examiner during prosecution of the ’772 [p]atent.” Prelim. Resp. 52–54. For each asserted ground, Petitioner relies on Angelot for most of the claim limitations and relies on the allegedly cumulative art only to show that relaying was known in the art. Pet. 20–72. But, as discussed above, Patent Owner does not show that Angelot (or any arguments based on Angelot) previously were presented to the Office during proceedings pertaining to the ’772 patent. Thus, on this record, we are not persuaded that the same or substantially the same art or the same or substantially the same arguments previously were presented to the Office. As a result, the first part of the Advanced Bionics framework is not satisfied.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a B.S. in Electrical Engineering or a related field with at least five years of experience in designing communication systems.” Pet. 16 (citing Ex. 1002 ¶¶ 34–39). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Daniel Blumenthal. Ex. 1002 ¶¶ 34–39. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 25. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,886,772 - Google LLC v. Flypsi, Inc. (D/B/A Flyp)InstitutedPTAB · Aug 2, 2023 · IPR2023-00360 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–6, finding a reasonable likelihood of success on the asserted obviousness challenges and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, upon considering the current record, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and the parties’ minimal investment in the District Court Litigation as to issues of unpatentability outweigh the projected trial date. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“evidence, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that the combination of Backhaus and Logan teaches the subject matter of limitation 1.b of claim 1. Also, on the current record, we determine that Petitioner provides reasons, with rational underpinnings, why a person having ordinary skill in the art would have been motivated to combine the teachings of Backhaus and Logan. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 19
- 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,667,770 - Google LLC v. Flypsi, IncInstitutedPTAB · Jul 31, 2023 · IPR2023-00361 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–11 under all asserted grounds, finding a reasonable likelihood that claims 1 and 2 would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and the parties’ minimal investment in the District Court Litigation as to issues of unpatentability outweigh the projected trial date. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to claims 1 and 2 of the ’105 patent. We determine that the record supports institution. Accordingly, we institute an inter partes review of all challenged claims under all grounds set forth in the Petition.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Here, Petitioner contends that no claims require construction at this time. Pet. 5. Patent Owner agrees. Prelim. Resp. 6. However, the parties disagree whether “pre-call” information is information prior to the entire call, or prior to a voice connection during a call. Petitioner asserts that information is the claimed ‘pre-call information” if it is “transmitted before connecting the voice call between the calling and called parties.” Pet. 33. Patent Owner argues that Petitioner “relies on a transmission that is part of the call itself.” Prelim. Resp. 1, 7. Patent Owner argues that Petitioner instead focuses its arguments on “when a voice path” for an incoming call is connected. Id. at 8. Although Patent Owner presents these arguments to distinguish the “via a data channel” limitations, the disagreement necessarily involves the question of when the claimed “call” begins. For purposes of institution, we need not reach a firm construction of the term because Petitioner provides a “second way” of meeting the “pre-call” limitation in which a prior outgoing call has provided the pre-call information that is stored, and then later used when an incoming call is received from the same number. However, because Patent Owner also” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication. . . . More education can supplement practical experience and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill for the purposes of institution. Prelim. Resp. 9. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner, as it is consistent with the ’105 patent and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,051,105
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.