• Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution denied
  PTAB · Oct 20, 2025 · IPR2025-00480 · APJ Lisa A Murray · IPR · Institution

  The Board denied institution because the Elliott/Jacob grounds did not show a reasonable likelihood that claims 1–15 were unpatentable, and Musk did not cure the deficiencies.

  RulingsInstitution decision

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

    “c) Summary We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a Bachelors’ degree in electrical or computer science or a comparable field of study, plus at least three years of professional experience in advertisement delivery systems or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 3; Ex. 1002 ¶ 79. Patent Owner does not offer a competing formulation, stating that “[f]or purposes of this preliminary response only, Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 12. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’296 Patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 6

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

    “After reviewing the parties’ arguments and evidence, we determine that no express constructions of the terms identified by Petitioner are needed 6 For the term “recording a request identifier associated with the request,” Petitioner asserts that it is unclear which “request” is at issue, Pet. 7–8, while Patent Owner argues that “the ‘request’ refers to the ‘request for content to be used within the registered application program’ as described in claim element 1.h.” Prelim. Resp. 13. For the reasons discussed below, we determine that it is not necessary for us to construe this term for purposes of this Decision. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). C.” slip op. at 7

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

    “as obvious over the combination of Elliott and Jacob. Pet. 9–60. Patent Owner contests Petitioner’s mapping of the cited prior art to four limitations in independent claim 1 (and the commensurate limitations in independent claims 6 and 11): limitations [1.a], [1.b], [1.d], and [1.e]. Prelim. Resp. 14– 39. Patent Owner also argues that one of ordinary skill in the art would not have been motivated to modify Elliott with the teachings of Jacob. Id. at 39– 46. We agree with Patent Owner that the proposed combination does not teach or suggest elements [1.a] and [1.e], for the reasons discussed below. Because the absence of these two elements from the cited prior art is a sufficient basis for denying institution, we do not address Patent Owner’s remaining arguments.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,433,296
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCInstitution denied
  PTAB · Oct 16, 2025 · IPR2025-00713 · APJ Linda E Horner · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Kelly, alone or with Paulsen, renders any challenged claim obvious.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response 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 Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition.” slip op. at 2

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner has failed to provide adequate evidence and analysis to show that Kelly discloses storing the identified user input in Kelly’s system. For instance, the portion of Kelly relied upon in the Petition describes how user input provides a particular game command to game processor 12, and game processor 12 interprets and uses this input to influence game states and game events. Ex. 1005, 10:12– 15. The portion of Kelly makes no mention of storing the user input. Petitioner also cites generally to other portions of Kelly with insufficient explanation of their relevance. Pet. 22; Ex. 1003 ¶ 136 (citing 1:44–46, 9:62–66, 46:32–37, 46:49–52). These cited passages describe generally that a computer, on which games are played, includes a video screen and buttons, and that user input is provided to a game unit to influence game events and/or provide particular game commands to the computer. Ex. 1005, 1:44–46, 9:62–66, 46:32–37, 46:49–52. Petitioner fails to sufficiently show how any of these passages describes storing user input, such as button presses, in Kelly’s system.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.6 Based on the testimony of Mr. Crevelt, 6 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 16 (citing Ex. 1003 ¶¶ 102–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’607 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11

  Nonecites Phillips · Graham
  Patents in suitUS 11,501,607
• Azurity Pharmaceuticals, Inc. v. Exelixis Inc.Institution denied
  PTAB · Jun 4, 2025 · IPR2025-00210 · APJ Jeffrey N Fredman · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving claims 1–3 unpatentable.

  RulingsInstitution decision

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

    “Accordingly, we find that on the current record Petitioner has not shown that the combination of Brown, Kubo, and Remington would inherently result in less than 200 ppm impurity and Petitioner has not shown that it has a reasonable likelihood that it would prevail on the obviousness ground.” slip op. at 29

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “Here, there is no dispute that the ’349 patent and Wilson, which issued from a patent application from which priority was claimed for the ’349 patent, share the identical disclosure of a pharmaceutical composition comprising Compound IA or IB; one or more fillers; one or more disintegrants; one or more glidants; and one or more lubricants. In this embodiment, the filler comprises microcrystalline cellulose. In this embodiment, the disintegrant comprises croscarmellose sodium. In this embodiment, the disintegrant comprises croscarmellose sodium and sodium starch glycolate. In this embodiment, the glidant comprises fumed silica. In this embodiment, the lubricant comprises stearic acid. Ex. 1001, 21:1–12; Ex. 1002, 20:51–62. There is express ipsis verbis disclosure of the elements recited in claim 1 of the ’349 patent.” slip op. at 13

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

    “1. Reason to reduce contaminant levels We agree with Patent Owner that Petitioner identifies no teaching in the prior art providing any reason to reduce levels of 6,7-dimethoxy-quinoline-4-ol specifically. And while Brown does teach a desire to form “substantially pure” compounds, Brown focuses on “at least about 90 wt.%” of the compound, then lists specifically “about 90, about 91, about 92, about 93, about 94, about 95, about 96, about 97, about 98, about 99 and about 100% wt. %.” Ex. 1003 ¶ 97. This permits a range of concentration for contaminants from about 0 to 10%.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “to modify Brown’s process with Kubo to eliminate the added step. See, e.g., Id. ¶ 73. But even with that combination, Dr. Dichtel states only that a “POSA would have expected there to be a decrease in the amount of 6,7- dimethoxy-quinoline-4-ol at the end of cabozantinib (L)-malate’s synthesis that was attributable to hydrolytic degradation of the 4- (nitrophenoxy)quinoline intermediate by avoiding its use in the synthesis.” Id. ¶ 78. That is not, however, the standard for inherency. It must be the necessary result, not a possible expected result. The Federal Circuit in Par explained that: Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” slip op. at 28

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,298,349
• Precision Cancer Technologies Inc. v. Oncoustics Inc.Institution denied
  PTAB · Jun 3, 2025 · IPR2025-00242 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has not established a reasonable likelihood of prevailing on its assertion that any of the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’330 patent.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “area” in the challenged claims was added by amendment. Ex. 1004, 181.8 In making the amendment, Applicant stated that the language added by amendment was intended to distinguish the pending claims over Uniyal,9 which Applicant characterized as disclosing a “time series” of ultrasound data. Uniyal relies on a time series of ultrasound data. In order to distinguish Uniyal, the claims have been amended to recite a single static set of ultrasound RF data in a single frame of the tissue area. As explained in the Interview, the claims rely on a signle [sic, single] “snapshot” frame of the ultrasound RF data rather than a time series or [sic, of] RF data as disclosed in Uniyal. Applicant respectfully submits the amended claims are allowable over all of the cited reference. Id. at 186–187; see also id. at 185 (Applicant’s remarks accompanying amendment, stating: “As explained in the Interview, a static set of raw ultrasound RF signals is collected for an area. This is a snapshot of the tissue area as opposed to taking a time series of RF signals”), 191 (Examiner interview summary, stating: “Inventor noted that Uniyal uses a time series US [ultrasound] data whereas the invention uses images that are non-coherent in time (e.g., a static frame)”).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “transducer, Petitioner points to Hope-Simpson’s teaching that its neural network may be “capable of ‘analyzing patterns using a with a [sic] multi-dimensional (2-or more dimensional) data set, which may also be thought of as localized data sets.’” Id. at 22 (quoting Ex. 1005 ¶ 6; alteration by Petitioner). Petitioner then asserts that “[t]he localized data sets described by Hope-Simpson are equivalent to the claimed ‘single set of raw ultrasound [RF] data forming a single frame of a tissue area.” Pet. 22 (citing Ex. 1002 ¶ 86 (testimony of Dr. Papanicolau)). But Petitioner does not explain why Hope-Simpson’s “localized data sets” equate with a single frame of a tissue area rather than, for example, a time series of frames taken at the same location. Pet. 22. Petitioner cites the testimony of Dr. Papanicolau, but Dr. Papanicolau’s testimony lacks both technical reasoning and evidentiary support; it simply mirrors the statement in Petition. Ex. 1002 ¶ 86. For this reason, we give Dr. Papanicolau’s ipse dixit testimony little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24 ,2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, to the extent this is the data that Hope Simpson provides to the processor, on this record, Petitioner has not sufficiently established that it constitutes a “single static set” of raw RF ultrasound data “forming a single frame.”” slip op. at 15

  Claim constructioncites KSR · Graham
  Patents in suitUS 11,602,330
• Manitowoc Foodservice Companies, LLC v. Gate CFV Solutions, IncInstitution denied
  PTAB · Apr 18, 2025 · DER2023-00006 · APJ John E Schneider · DER · Institution

  The Board denied institution of a derivation proceeding because Manitowoc did not show that all elements of amended claim 1 were conceived and communicated to Gate CFV Solutions.

  RulingsInstitution decision

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

    “invention and communicated that invention to Respondent prior to July 22, 2021, the filing date of Respondent’s ’693 application. See Pet. 6–10. Of great importance here, however, are the requirements noted above, that Petitioner must show: (1) that Petitioner has at least one claim that is the same or substantially the same as Respondent’s claimed invention; (2) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to Respondent; and (3) that the challenged claims are drawn to the same or substantially the same invention as the invention Petitioner disclosed to Respondent. See 37 C.F.R. § 42.405(a)(2), 37 C.F.R. § 42.405(b)(3). For the reasons discussed below, Petitioner has not made the requisite showing in the Petition with respect to at least item (2).” slip op. at 9

  None
• Ericsson Inc. / Nokia Of America Corp. v. Active Wireless Technologies LLCInstitution denied
  PTAB · Nov 12, 2024 · IPR2024-00886 · APJ Monica S Ullagaddi · IPR · Institution

  The Board denied institution for claims 9–16 under § 314(a), finding the Fintiv factors favored denial and neither obviousness challenge presented compelling merits.

  RulingsInstitution decision

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

    “When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity” slip op. at 6

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

    “or Ingale in view of Jung. Pet. 18–51. For the reasons discussed below, we determine that Petitioner’s showing does not rise to the level of “compelling merits” according to the Office’s current guidance and Board precedents. CommScope at 3–4 (quoting Guidance Memo, 4) (“[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges ‘in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”); OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49–50 (PTAB only ‘plainly lead to a conclusion that one or more claims are unpatentable’ . . . if it is highly likely that the petitioner would prevail with respect to at least one challenged claim”). 1. Petitioner’s Showing for Claim 9 Below we provide an element-by-element analysis of Petitioner’s obviousness showing for claim 9. After considering the evidence supporting Petitioner’s obviousness showing, and Patent Owner’s arguments and evidence as to why Petitioners’ obviousness showing is deficient, we consider whether the totality of the evidence rises to the level of compelling merits.” slip op. at 19

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

    “For the reasons set forth above, and even if we consider Petitioner’s proposed rationale for combining Ingale and Jung to be supported by sufficient rational underpinnings (see e.g., Pet. 24–27), neither Jung nor Ingale, either individually or in the proposed combination set forth by Petitioner teach or suggest limitation 9.6 of claim 9 so as to rise to a compelling, meritorious showing for claim 9. 4. Remaining Claims Petitioner’s arguments and evidence for independent claim 13 (Pet. 58–59) and dependent claims 10–12 and 14–16 (id. at 51–57, 59–60) are substantially similar to Petitioner’s arguments and evidence for claim 9 and are unopposed at this stage by Patent Owner (except for the issues discussed above with respect to independent claim 9) (see e.g., Prelim. Resp. 15). Accordingly, Petitioner’s showing for claims 10–16 do not differ or deviate from the showing with respect to independent claim 9 so as to rise to the level of a compelling, meritorious showing, either for independent claim 9, or any of claims 10–16.” slip op. at 32

  • Skill levelSkill level petitioner adoptedOther

    “At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 6–7 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Petitioner’s description of a POSITA appears consistent with the subject matter of the ’557 patent and with the prior art of record, we apply it for purposes of this Decision. 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).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,019,557
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16

  • Prior constructionPrior construction adoptedDecided for petitioner

    “For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 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” slip op. at 15

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

    “Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,880,715
• Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution denied
  PTAB · Aug 23, 2024 · IPR2024-00458 · APJ Brian D Range · IPR · Institution

  The Board denied institution on both §103 grounds because neither combination showed a reasonable likelihood that claims 1–4 and 11–14 were unpatentable.

  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 “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (POSITA): would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing [graphical user interfaces (GUIs)] for computing devices. [Ex. 1003] ¶ 20–22. More education could substitute for experience and vice versa. Id. Pet. 14; see also Ex. 1003 ¶ 21 (Dr. Houh testifying that this level of skill is appropriate). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner argues that in IPR2021-00786, the Board construed “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” Pet. 14–15 (citing IPR2021-00786, Paper 6, 13–16). IPR2021-00786 involved U.S. Patent No. 9,880,715 B2 (“the ’715 patent”). Petitioner further notes that “the Board found [this] limitation ‘is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.).” Id. Petitioner further argues that during a reexamination proceeding of the ’715 patent, “the Examiner also clarified that the ‘plurality of views’ limitation does not encompass merely changing to entirely different content.” Id. (citing Ex. 1005 (90/014,958 Ex Parte Reexamination)). Petitioner’s witness, Dr. Houh, applied this construction when forming opinions and Petitioner proposes that we adopt this construction in this proceeding. Ex. 1003 ¶ 53; Pet. 15.” slip op. at 10

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

    “Here, claim 1 requires the functionality of, for example, “selecting one of the plurality of views for display on the computer system in response to the detected current computer system configuration.” Ex. 1001, 71:34–36. As in Arendi and DSS, this functionality plays a major role in the subject matter claimed; this selection as at the heart of the ’818 patent. See, e.g., Ex. 1001, 2:49–62 (explaining that patent is directed to providing different views). We also determine that the limitation is not “unusually simple.” The cited art understood that display orientation could be modified based on a change in configuration (Pröll) and understood that a view could be selected based on a user’s active choice (the user shaking the device as in Martinez6), but the cited art did not recognize selecting a view based on a change of configuration. Prelim. Resp. 41. The evidence of record does not indicate that recognition of this function would be “unusually simple.”” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,564,818
• Apple Inc. v. Masimo CorporationInstitution denied
  PTAB · Jun 27, 2024 · IPR2024-00293 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood that Bailey’s processing board generated the claimed SpO2 measurement values.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has not established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’507 patent.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The main difference between the parties’ definitions of the POSA appears to be that Patent Owner specifies that the POSA’s knowledge and experience may include optical sensors and that the POSA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies and both parties agree that the POSA would have a working knowledge of 11 physiological monitoring technologies. Ex. 1003 ¶ 24; Prelim. Resp. 6. We find the additional specificity of Patent Owner’s definition to be helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’507 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note that we would reach the same outcome under either definition of the POSA.” slip op. at 11

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

    “Petitioner does not identify any claim terms as needing formal construction. Pet. 3 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that “the claims have 12 their plain meaning and thus require no construction,” noting that this is the same position it took in the Delaware Litigation. Prelim. Resp. 12.11 We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “4. Discussion We agree with Patent Owner that Petitioner’s showing with respect to the claim requirements relating to SpO2 measurement values is deficient. In particular, Petitioner maps the “SpO2 measurement values” “generat[ed]” by the “processing board” to the voltage level signals sent from the microcontroller to the wireless transmitter and then from the wireless transmitter to the mobile device. Pet. 19; Ex. 1004, 47 (“The only data that was actually sent from the digital interface to the user interface [i.e., the mobile device] was the voltage level and its corresponding LED, which was sent over in a 2-bit array of data.”). And Petitioner maps “the SpO2 measurement values” “display[ed]” in a “display portion[]” of the mobile device to a displayed SpO2 percentage. Pet. 21 (relying on Figure 32 of Bailey (reproduced supra § II.D.1), an image of the user interface of Bailey’s mobile device displaying an SpO2 percentage but not a voltage); see also id. at 22 (“As shown in Figure 32 below, Bailey’s mobile device displays at least a SpO2 value and a heart rate (a plurality of physiological parameters comprising at least the SpO2 measurement values).”). Thus, the data generated by the microprocessor (a voltage level) is not the data displayed by the mobile device (an SpO2 percentage). Consistent with this, Bailey indicates that its “User Interface,” i.e., its mobile device, is the system component that calculates the SpO2 level. Ex. 1004, 50 (explaining, in a discussion of the “User Interface,” that blood oxygen saturation was calculated using a “peak detection algorithm”).” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,736,507
• Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution denied
  PTAB · May 28, 2024 · IPR2024-00481 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 12, 14, or 16–18 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 10–11. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 18. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “Lane’s orientation information would generate information indicative of a current mode of operation as claim 18 requires. Instead, we agree with Patent Owner that Petitioner has not carried its burden to establish a reasonable likelihood of prevailing in showing that a person of ordinary skill in the art would have, based on the teachings of Lane or other cited art, used an accelerometer that generates orientation information indicative of the current mode of operation. See Prelim. Resp. 35–42. Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. Lane does not teach using the accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 29.” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,563,229

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.