- PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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) (2024).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,664,059 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Feb 4, 2025 · IPR2024-01144 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because AT&T failed to show a reasonable likelihood that claims 1–22 were obvious over either Nokia and the 3GPP-Standard or Ericsson and the 3GPP-Standard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any responses thereto shows “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). Taking into account Innovative Sonic’s Preliminary Response, AT&T’s Preliminary Reply, and Innovative Sonic’s Preliminary Sur-reply, we conclude that the information 1 We do not reach whether we should exercise our discretion to deny the Petition under Fintiv because, as we explain below, we deny the Petition based on the merits. See infra Sections II.B.5 and II.C.1. presented in the Petition does not establish that there is a reasonable likelihood that AT&T would prevail in demonstrating at least one of claims 1–22 of the ’489 patent is unpatentable. We, therefore, deny AT&T’s Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Relying on the testimony of Dr. Hansen, AT&T argues the following: [a]s of the earliest claimed priority date, a person of ordinary skill in the art at the time of the alleged invention of the ’489 patent . . . would have had a [Bachelor of Science] in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. A [person of ordinary skill in the art] would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. More education may supplement practical experience or vice versa. Pet. 14 (citing Ex. 1002 ¶ 368). In the Preliminary Response, Innovative Sonic does not address AT&T’s assessment of the level of skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt AT&T’s uncontested assessment of the level of skill in the art because it is consistent with the ’489 patent and the asserted prior art.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“issue fares no better. With one exception, Dr. Hansen, relies on the same disclosures of the Update for 3GPP TS 36.331 v.9.4.0 to support his testimony, which, as we explain above, does not account for the plain language of the disputed limitation. Compare Pet. 26–27, 43, with Ex. 1002 ¶¶ 87–90. In addition, Dr. Hansen testifies that a person of ordinary skill in the art would have understood that “the E-UTRAN configuring the UE with one or more SCells would necessarily include the configuring of at least one SCell by a source eNB to a UE.” Ex. 1002 ¶ 91 (emphasis added). But neither AT&T nor Dr. Hansen establish inherency in its obviousness analysis. See PAR Pharm., Inc. v TWI Pharms., Inc., 773 F.3d 1186, 1194– 95 (Fed Cir. 2014) (recognizing that “inherency may supply a missing claim limitation in an obviousness analysis,” but limiting the doctrine of inherency “only when the limitation at issue is the ‘natural result’ of the combination of prior art elements” (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Apart from the conclusory assertion above, Dr. Hansen does not identify sufficient evidentiary support demonstrating that the requirement identically recited in each of independent claims 1 and 12 of “configuring at least one SCell by a source eNB to a User Equipment (UE)” would have been the “natural result” flowing from the Update for 3GPP TS 36.331 v.9.4.0’s disclosure of the E-UTRAN configuring the UE with at least one SCell. PAR Pharm., 773 F.3d at 1195. Accordingly, we do not credit Dr. Hansen’s testimony that implicates the doctrine of inherency because it not supported by evidence of record.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, AT&T contends that “the Board does not need to expressly construe any [claim] terms to resolve the arguments presented herein” because the asserted prior art “discloses all limitations under any plausible construction.” Pet. 14 (citing Ex. 1002 (Declaration of Dr. Christopher Hansen) ¶ 456). In the Preliminary Response, Innovative Sonic “agrees with [AT&T] that no [claim] term needs to be construed.” Prelim. Resp. 4 (citing Pet. 14). For purposes of this Decision, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,237,489 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. 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.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,446,823 - Cisco System, Inc. v. Umbra Technologies Ltd.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00498 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Cisco did not show a reasonable likelihood that claims 1–26 were obvious over Shieh and Potti, principally for lack of a sufficient rationale to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Preliminary Reply, and UMBRA’s Preliminary Sur-reply, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Cisco would prevail in challenging any one of claims 1–26 of the ’482 patent as unpatentable. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Reddy, Cisco argues the following: a [person of ordinary skill in the art] in April 2015 timeframe would have been familiar with communication networks having a distribute firewall system in the cloud. A [person of ordinary skill in the art] would have a working knowledge of the function performed by firewalls including stateful inspection and deep packet inspection. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience; or by obtaining a Master’s degree in computer science, but having only one year of experience; or by having no formal education but experience in computer network security of at least four years. Pet. 14 (citing Ex. 1003 ¶ 40). UMBRA does not address the level of skill in the art in its Preliminary Response. See Prelim. Resp. 1–16. To the extent necessary, and for purposes of this Decision, we adopt Cisco’s assessment of the level of skill in the art because it is supported by the testimony of Dr. Reddy and it is consistent with the ’482 patent and the asserted prior art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Notably absent from the “State of the Art” section is a specific reason why a person of ordinary skill would take Potti’s disclosure of performing DPI on a cloned copy of traffic and apply it to Shieh’s service processing module 313, which Cisco relies on to teach the claimed “second perimeter firewall.” See Pet. 15–19; see also id. at 40 (arguing that Shieh’s service processing module 313 (pink) teaches the claimed “second perimeter firewall”). Instead, Cisco generally discusses the evolution of firewall technology and its move to the cloud as of April 2015, but does not identify the benefits that result from modifying Shieh in this way. At best, Cisco asserts that “[t]he prior art references, and the discussions of what was known to a [person of ordinary skill in the art], provide the factual support for the general description of the state of the art at the time of the invention, and provide additional motivation to modify or combine the references.” Pet. 15. In our view, merely providing a general description of the state of the art and asserting that it provides a motivation to combine, without providing the necessary factual underpinnings to support the purported benefits that result for combining the relevant teachings of Shieh and Potti, is akin to stating in a conclusory fashion that this proposed combination “would have been obvious.” See In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been ... ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’ ”).” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“A review of Cisco’s testimony from its declarant, Dr. Reddy, reveals no additional explanation as to why a person of ordinary skill would have been motivated to combine the teachings of Potti with those of Shieh. See Ex. 1003 ¶¶ 130–137. These portions of Dr. Reddy’s testimony merely parrot the arguments presented by Cisco in the Petition. That is, he relies on a general description of the state of the art, without providing any additional explanation beyond the bare assertion in the Petition that a person of ordinary skill would have used purported “well-known techniques” to combine Shieh’s service processing module 313 with Potti’s disclosure of performing DPI on a cloned copy of traffic.” slip op. at 21
§ 103 obviousnesscites KSRPatents in suitUS 10,574,482 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01107 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on claims 9–14 and 16 under either asserted obviousness combination.
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 the Petition and any response thereto shows “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 the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01106 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because DJI did not show a reasonable likelihood of proving claims 1–5, 7, and 8 obvious, due to deficient and inconsistent treatment of “pilot identification information.”
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 the Petition and any response thereto shows “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 the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden to show a likelihood of prevailing in its challenge to independent claim 1 as presented in the Warner-Wakutsu-Shavit grounds, nor dependent claims 2– 5, 7, and 8, which include the same deficiencies.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” The Petition does not address the scope and meaning of this claim term, but Patent Owner argues (Prelim. Resp. 44– 46, 57–59; Prelim. Sur-Reply 3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. Highlighting the Petition’s inconsistencies, for limitations [1E] and [1J], Petitioner states “in Shavit . . . the pilot ‘types in or selects his name, the name of the co-pilot if any, and the aircraft’s serial number.” Pet. 32 (citing Ex. 1008 ¶ 108). For limitation [1H], however, Petitioner states Shavit’s “user credential for a pilot includes ‘pilot identification information.’” Pet. 39 (citing Ex. 1008 ¶ 87; Ex. 1003 ¶ 116). Responding to Patent Owner’s arguments that those positions are inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · Nov 9, 2023 · IPR2023-00852 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–15 because Petitioner did not show a reasonable likelihood that Tuan was a prior art printed publication, defeating the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date” of the ’948 patent (i.e., November 4, 2011). Hulu, Paper 29 at 13 (emphasis added). As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a prior art printed publication. See id. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claims 1–15 would have been obvious over the combination of Nollet, Tuan, and Seo. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. Therefore, we do not institute an inter partes review on the asserted ground as to any of the challenged claims. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Importantly, Ms. Munford’s testimony does not indicate that an ordinary artisan could have located Tuan with reasonable diligence. We additionally find that Ms. Munford’s conclusory assertion that Tuan “was made available to the public” in October 2009 (Ex. 1012 ¶ 11; see also Ex. 1015 ¶ 9) is insufficient to establish public accessibility. As our reviewing court has explained, it is “critical” that there be “some evidence that a person of ordinary skill could have reasonably found” the reference. Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “is not publicly accessible if the only people who know how to find it are the ones who created it”). In other words, even assuming that Ms. Munford establishes Tuan was technically available to the public in October 2009, her testimony fails to support a finding that an ordinary artisan could have located Tuan with reasonable diligence.” slip op. at 20
- Obviousness (§103) › Analogous artNot reached
“For these reasons, we determine that Petitioner fails to “identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date” of the ’948 patent (i.e., November 4, 2011). Hulu, Paper 29 at 13 (emphasis added). As a result, we determine that Petitioner fails to show a reasonable likelihood that Tuan qualifies as a prior art printed publication. See id. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claims 1–15 would have been obvious over the combination of Nollet, Tuan, and Seo.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a combination of a Bachelor’s Degree (or a similar Master’s Degree, or higher degree) in an academic area emphasizing computer science, or a related field, and two or more years of work experience with parallel processing technologies.” Pet. 15 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address the level of ordinary skill in the art in the Preliminary Response. On the present record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’948 patent (see Ex. 1003 ¶ 21), and for purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,150,948 - Amazon.Com, Inc. / Amazon Web Services, Inc. v. Swarm Technology LLCInstitution deniedPTAB · Jul 5, 2023 · IPR2023-00390 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner fails to show a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition. We, therefore, do not institute an inter partes review of the challenged claims based on the arguments and evidence presented in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that no inter partes review is instituted as to any claim of the ’777 patent.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or a related field, and about five years of industry or academic research experience in parallel or distributed computing, system architecture, or an equivalent.” Pet. 6 (citing Ex. 1003 ¶¶ 27–28). Petitioner further argues that “[a] post-graduate degree or additional formal education can compensate for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not address the level of skill in the art. See Prelim. Resp. Because it is consistent with the ’777 patent and the asserted prior art, we adopt Petitioner’s proposed formulation and apply it in our obviousness evaluations below.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes construction for the terms “solidarity cell” and “thread(s).” Pet. 6–8. For all other terms, Petitioner argues that “[t]he prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning.” Pet. 6 (emphasis added) Patent Owner does not address claim construction. See Prelim. Resp. For purposes of this Decision, we need not expressly construe any claim terms. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“combination of Lurie and Ethernet Specification teaches or suggests the disputed limitation. There is no dispute that Lurie teaches that the ATD Mechanism sends the TCWs a notification that a task is available before the TCW obtains its first task. See, e.g., Pet. 32 (“TCWs register with the ATD to receive a notification when tasks first become available.”). For example, Lurie describes how the ATD Mechanism sends a notification and that the TCW responds to that notification by obtaining a task: “The automatic task distribution mechanism 260 provides notification (step 538) to the technical computing worker 260 of the availability of the task. In response to receiving the notification (step 540), the technical computing worker obtains (step 544) the task provided (step 540) from the automatic task distribution mechanism 260.” Ex. 1007 ¶ 86; see also Ex. 1007, Fig. 5B (steps 538, 540, 544); Prelim. Resp. 29–30. Similarly, Lurie describes how the TCW receives a notification before obtaining a task: “When the task is submitted to the object exchange repository 662 by the job manager 265, the technical computing worker 270 receives a notification and takes the task from the object exchange repository 662 by performing a take operation.” Ex. 1007 ¶ 97; see also Prelim. Resp. 29. Lurie also describes how a notification is sent prior to a TCW taking a task when the system is operating in batch mode. See Ex. 1007 Fig. 5C (steps 538, 540, 542, 544). Because the TCW only takes a task after a notification, it is not acting proactively. See Ex. 2001 ¶ 50. Instead, the TCW is reacting to a notification that tasks are available. Nor are we sufficiently persuaded by Petitioner’s argument that the notification is only required for the first task and that for all other tasks, the TCW will obtain the task without notification using the bag-of-tasks model. See Pet. 33–37. Assuming Petitioner is correct in that Lurie uses the bag-oftasks model, the TCW still requires the first notification before it starts obtaining tasks. As Dr. Lowenthal explains, the notification is required to “kick off the procedure.” Ex. 1003 ¶ 196. Because of the undisputed need for the initial notification, it does not matter that the TCW can obtain additional tasks without further notifications. A cell that sometimes needs a notification to obtain a task is not proactive; rather, it is at least partially reactive.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,146,777 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Tot Power Control, S.L.Institution deniedPTAB · May 2, 2023 · IPR2022-01536 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because neither asserted obviousness ground showed a reasonable likelihood of establishing claims 1–12 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–12 of the ’865 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’865 patent “would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or related field, with 2-3 years of experience in telecommunication systems and knowledge of telecommunication standards, with superior education compensating for less work experience.” Pet. 18 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 20–21. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review, except that we do not include the qualifier “at least,” which would expand the required amount of education and experience indefinitely.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 17–18. Patent Owner submits that, at this stage of the proceeding, we should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“received (SIRrec) based on a data signal (107, 108) received from a base station (102, 103) or mobile station (104).” Ex. 1001, 8:48–50. For this limitation, which relates to closed (inner) loop power control, Petitioner relies on a combination of Laakso and TS214. Pet. 35. First, Petitioner contends that Laakso discloses closed loop power control in WCDMA. Id. (citing Ex. 1005, 2:14–23, 8:28–9:8, 9:20–30; Ex. 1003 ¶ 105). Petitioner also contends that a person of ordinary skill in the art would have been aware of closed loop power control standards, such as TS214, which require estimating SIR based on a data signal received from a base station or mobile station. Id. (citing Ex. 1006, 12–15 (§ 5.1.2.2), 49 (Annex B.2); Ex. 1003 ¶ 105). Petitioner further contends that a person of ordinary skill in the art would have been motivated to combine Laakso’s outer loop power control success. Id. (citing Ex. 1003 ¶ 105); id. at 29–33 (citing Ex. 1003 ¶¶ 92–101) (addressing motivation to combine Laakso and TS214).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,865
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.