• Digital Global Systems, Inc. v. Deepsig Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00194 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution under § 314(a), finding no reasonable likelihood for the remaining claims except claim 13, whose potential success did not justify instituting trial.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent and at least two years of experience working with radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4

  • 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. 13; Prelim. Resp. 16. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5

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

    “reasonable likelihood of prevailing in showing that claims 4–6, 12, 14, and 16–22 would have been obvious over Jüschke and Holt. Petitioner may satisfy its burden for claim 13, but, as discussed below, that would not impact our decision to exercise our discretion under § 314(a) to deny institution. See Section II.F.” slip op. at 16

  • Other 314aInstitution denied discretionary otherInstitution denied

    “inter partes review. SAS Inst. v. Iancu, 584 U.S. 357, 366 (2018). Specifically, “[i]f a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, . . . the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide, 64 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Here, thirteen challenged claims remain after Patent Owner’s statutory disclaimer. Petitioner at most demonstrates a reasonable likelihood of prevailing for one dependent claim, which has no claims depending therefrom. See Sections II.C–II.E. Thus, based on the particular facts of this case, we find that instituting trial would not be an efficient use of the Board’s time and resources, and we exercise our discretion to deny institution under § 314(a). See Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,777,540
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution denied
  PTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution

  The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.

  RulingsInstitution decision

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

    “Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13

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

    “For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24

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

    “Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,499,168
• Solus Advanced Materials Co, Ltd. v. SK Nexilis Co., Ltd.Institution denied
  PTAB · Apr 22, 2025 · IPR2024-01460 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution of review of claims 1–11 because the Fintiv factors, including the early trial date and close merits case, favored discretionary denial.

  RulingsInstitution decision

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

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review 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.” Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review. A. Real Parties-in-Interest” slip op. at 2

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

    “Board’s projected statutory deadline to issue a final written decision. Fintiv, Paper 11 at 9. “If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.” Id. Conversely, “[i]f the court’s trial date is earlier than the projected statutory deadline,” this has generally weighed “in favor of exercising authority to deny institution.” Id.” slip op. at 15

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

    “Petition under 35 U.S.C. § 325(d) because the same or substantially the same art and arguments were before the Examiner during prosecution and Petitioner’s has not demonstrated that the Examiner erred in a material manner when allowing the claims. Pet. 17–18. Given our discretionary denial of the Petition in view of the Fintiv factors, we do not address Petitioner’s further arguments with respect to § 325(d).” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner applies Petitioner’s recited level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 4. Upon review of the parties’ arguments and the prior art of record, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan for purposes of this decision as it appears consistent with the disclosures of the ’090 patent and the prior art of record. C. Claim Construction” slip op. at 9

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,480,090
• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing denied
  PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing

  The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3

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

    “discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4

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

    “Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9

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

    “claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 11,048,751
• Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution denied
  PTAB · Dec 19, 2024 · PGR2024-00042 · APJ Lisa L Tsang · PGR · Institution

  The Board denied institution of PGR challenging claims 1–16, finding the first five Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

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

    “during the conference and in the Minute Entry, and in the court’s subsequent Order Regarding Schedule. We also note that the evidence shows the district court may intend to reschedule the trial to a date substantially earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1029, 10−11. However, given that the Order does not unambiguously set a trial date for December 1, 2025, or even sometime in December 2025 or January 2026 (see Ex. 1028), we decline to speculate as to what date the court may ultimately select for trial. Moreover, the record shows that Petitioner has consistently opposed moving the trial to a date earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1026, 2−4; Ex. 1029, 11. We view Petitioner’s opposition as creating yet more ambiguity as to the trial date in the co-pending litigation. Therefore, we find that factor 2 is neutral because the exact trial date in district court is uncertain.” slip op. at 14

  • BurdenNot reached

    “if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. This standard is only met “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (Vidal Oct. 4, 2022) (precedential) (citing Guidance Memo 4). We have reviewed Petitioner’s challenges and Patent Owner’s arguments. For the reasons explained below, we determine that Petitioner’s challenges have not risen to the threshold of compelling merits. Before addressing the parties’ arguments regarding the asserted grounds, we address: (a) the level of ordinary skill in the art, (b) claim construction, and (c) relevant principles of law; and we provide (d) overviews of the asserted art.” slip op. at 18

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that its proffered additional level of ordinary skill in the art appears consistent with the experience Petitioner describes. See Pet. 16. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner and supplemented by Patent Owner, because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’561 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In this regard, Mr. Fallin testifies that I have decades of experience working directly with joint replacement systems, including hip joint replacement systems, knee replacement systems, and facet joint replacement systems. My work on these joint replacement systems included my direct engagement or supervision of and professionals in the inventing, designing, fabricating, testing, obtaining regulatory approvals, ensuring regulatory compliance, commercializing, and patenting of these systems. Ex. 1002 ¶ 10. Mr. Fallin also testifies that his experience “includes working directly with supervising professionals whose responsibilities included designing, developing, and commercializing joint replacement systems and similar device[s].” Id. ¶ 67 As such, Mr. Fallin identifies “decades” of experience with joint replacement systems. Ex. 1002 ¶ 10. Moreover, Patent Owner does not persuasively explain why Mr. Fallin’s “direct engagement” and “working directly with,” as well as “supervision” of, other individuals designing joint replacement systems, does not at least imply personal design experience. See Prelim. Resp. 10–11. Therefore, we determine that the current record reflects that Mr. Fallin is qualified to testify as to the knowledge of a person of ordinary skill in the art.” slip op. at 20

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,771,561
• Reed Semiconductor Corp. v. Monolithic Power Systems, Inc.Institution denied
  PTAB · Nov 26, 2024 · IPR2024-00871 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim; it also found institution inefficient based on Ground 1 alone.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12

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

    “On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Unpatentability of Claims 1, 11, and 12 as Anticipated by TI,” slip op. at 13

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

    “establishing the unpatentability of any of the challenged claims of the ’608 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 39

  • PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied

    “Here, Petitioner advances five challenges with four directed to the same three independent claims. Pet. 3. We, for the reasons discussed below, determine that Petitioner has failed to show a reasonable likelihood of prevailing on Grounds 2 through 5. We further determine that, based on the particular facts of this proceeding, instituting a trial with respect to all grounds and all the challenged claims based on evidence and arguments directed only to Ground 1 would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, even if Petitioner met the requisite burden for institution as to Ground 1, we would exercise our discretion and not institute an inter partes review. E. The Alleged Anticipation of Claims 1, 11, and 12 by Galinski (Ground 2)” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,590,608
• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing granted
  PTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing

  Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8

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

    “discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4

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

    “those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,048,751
• Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution denied
  PTAB · Sep 20, 2024 · IPR2024-00822 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

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

    “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. Fintiv, Paper 11 at 5‒6. “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. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “from his Declaration cited on page 17 of the Petition, however, Dr. Harwell essentially repeats verbatim the conclusions from the Petition quoted above: 98. As such, Ayers discloses that subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid. For example, fracturing fluid containing polyacrylamide, a common polymer additive to fracturing fluid, may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex with metal ions naturally present in the formation. Harwell Decl. ¶ 98, cited at Pet. 17. Dr. Harwell provides no additional scientific or technical basis for these conclusory restatements of Petitioner’s assertions, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15– 17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 31 (arguing that paragraph 98 of the Harwell Declaration “repeats the Petition essentially verbatim and fails to provide any further evidence or explanation on how Ayers discloses (or even suggests) the claimed subject matter”); 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.”). We also view Petitioner’s and Dr. Harwell’s conclusions as lacking because they fail to demonstrate that a “subterranean-formed metal-polymer complex” would necessarily have been present in Ayers’s subterranean formations. Instead, as noted by Patent Owner, both Petitioner and Dr. Harwell can muster only that “subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid” and that “fracturing fluid containing polyacrylamide . . . may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex . . . .” Pet. 17; Harwell Decl. ¶ 98 (emphasis added); see Prelim. Resp. 31–32 (presenting this argument). Even assuming these statements to be accurate, and even if the statements are unrebutted at trial, they are not sufficient on the record here to demonstrate compelling merits of anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (“Inherency . . . 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.”).9” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner states—without any supporting evidence—that Patent Owner (assumedly in the Parallel Litigation) has described a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the [challenged p]atent [as having] at least a bachelor’s degree in chemistry, chemical engineering, petroleum engineering, geology, or the equivalent, and at least two years of experience in oil and natural gas well treatments, or an equivalent amount of relevant work and/or educational experience. Pet. 5. Petitioner “is prepared to adopt” this definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10–11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16

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

    “Petitioner does not propose constructions for any claim terms. See Pet. 11–12. In response, Patent Owner “agrees to accept the construction for any claim terms from the [challenged] patent it presented in district court . . . [,] none of which require a construction different from the plain import of the claim language itself.” Prelim. Resp. 12. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. 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))).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,697,282
• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution denied
  PTAB · Jul 26, 2024 · IPR2024-00326 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution under § 314(a) based on Fintiv, finding that most factors favored denial and the obviousness challenges did not meet the compelling-merits standard.

  RulingsInstitution decision

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

    “The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs slightly against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and as such, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “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.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 14

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

    “IV. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Patent Owner also argues that we should exercise our discretion to deny institution of inter partes review in this case under 35 U.S.C. § 325(d) because “Mahajan and Danciu constitute the same or substantially the same art that has already been considered by the Patent Office.” Prelim. Resp. 42. However, because we will not be instituting an inter partes review based on our discretion to deny the Petition under § 314(a), we need not determine whether it would be appropriate to discretionarily deny the Petition under § 325(d).” slip op. at 24

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

    “the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that Petitioner does not show that Mahajan discloses or renders obvious the converted commands limitations of the claims. Particularly, all of the claims require that a media receiver (or computing device) receives a set of commands that is recognizable by the first type of media application and is converted via an API adapter to be recognizable by the first type of media playing application. Petitioner’s reliance on Mahajan’s Figure 3 for disclosing this limitation is not persuasive. Pet. 12–13, 39–41; Ex. 1102 ¶¶ 178–179, 182. Mahajan’s Figure 3, with Patent Owner’s annotations added coloring for different platforms and different commands, is reproduced below. Prelim. Resp. 28. Mahajan’s Figure 3, reproduced above with Patent Owner’s added coloring, shows that user-commands 306A–I (red) for server 202’s media platform are genericized by server 202’s RTS media abstraction module 210 (orange) using RTS mapping table 302 and corresponding generic commands 308A–I, 310A–I (grey) are sent to client 204’s RTS media abstraction module 214 (blue), which then converts the generic commands into platform-specific media commands 312A–I (green) for the client 204’s media platform. Ex. 1114 ¶¶ 35–43. More particularly, Mahajan discloses that its “RTS abstraction module 210 can translate the intercepted platform specific media commands into generic or abstracted media commands.” Ex. 1114 ¶ 36 (emphasis added). Next, “[t]he generic media commands can be sent from the server [202]’s RTS media abstraction module 210 to the client [204]’s RTS media abstraction module 214.” Id. Then, “[t]he client [204]’s RTS media abstraction module 214 can translate the generic media commands . . . into media commands that are specific to the client [204]’s media platform 212.” Id. Mahajan also discloses that “server [202]’s RTS media abstraction module 210 can receive media commands that are specific to the server [210]’s media platform 208.” Id. ¶ 37 (emphasis added). Thus, only media commands 312A–I (green) are specific to client 204’s media platform 212, not commands 306A–I, nor commands 308A–I, nor commands 310A–I. See id. ¶¶ 39–41. It appears that Petitioner recognizes such by stating that “Mahajan’s server translates specific commands of a first type to genericized commands, the genericized commands are transmitted, and then Mahajan’s client translates those generic commands to specialized commands of a second type.” Pet. 12–13 (citing Ex.1114 ¶¶ 35–36, Figs. 1–2) (emphasis added); see also Prelim. Resp. 30 (citing Pet. 34–35, 59, arguing Petitioner concedes Mahajan’s RTS Media Abstraction module of the client converts the commands received by the client from the server). With these disclosures, we agree with Patent Owner that any conversion of generic commands into platform-specific media commands for Mahajan’s client 204’s media platform 212 (as colorized green in Figure 3 by Patent Owner) is performed on the client 204 side, not on the server 202 side and thus, “Mahajan does not disclose the claimed component receiving a set of converted commands—i.e., commands that have already been converted when they are received.” Prelim. Resp. 27–28. We further agree with Patent Owner’s assessment that “Mahajan teaches that the client receives the generic commands alleged to be in a universal format; it does not disclose commands that are receive[d] in a first format that corresponds to [or is recognizable by] the first type of media playing application, as the claims recite.” Id. at 28; see Pet. 29–31, 39, 41; Ex. 1114 ¶¶ 36, 63. Petitioner appears to agree by stating that in regard to Mahajan’s teachings, 1) commands for a type of media playing application on the server are received at Mahajan’s server, 2) the commands are translated into a universal command, 3) the universal command is transmitted to the client, 4) the client re-translates the universal command, and 5) the new specific command is executed. Pet. 31 (citing Ex. 1114 ¶¶ 35–36, Figs. 1, 2; Ex. 1102 ¶ 159); see also Prelim. Resp. 29 (citing Ex. 1114 ¶¶ 13–14, 63).” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 11,086,934
• T-Mobile USA, Inc. / AT&T Services Inc. et al. v. Cobblestone Wireless LLCInstitution denied
  PTAB · Jun 5, 2024 · IPR2024-00136 · APJ Russell E Cass · IPR · Institution

  The Board denied institution of IPR on challenged claim 1 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

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

    “Thus, in 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. In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits. Id. at 4–5. In this case, Fintiv factors 1–5 favor denial. Specifically, weighing factors 1–5 in this case, we find that the approximately 8-month delay between the estimated trial date and the deadline for a final written decision in this IPR (factor 2), the progress of and investment made by the parties and the Court in the parallel district court case (factor 3), and the fact that Petitioner is also a party in the District Court Litigation (factor 5) outweigh Petitioner’s stipulation mitigating the concerns about overlap between the two proceedings (factor 4). Additionally, we find that factor 1 is neutral. Thus, we address whether the merits of Petitioner’s case are compelling.” slip op. at 19

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

    “An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that it is appropriate for us to exercise our discretion under 35 U.S.C. § 314(a) to deny institution in this proceeding. Accordingly, we do not institute an inter partes review based on the Petition.” slip op. at 2

  • BurdenNot shown unpatentable

    “Based on the present record, Petitioner has not presented a compelling, meritorious case that the challenged claims are unpatentable. Petitioner bases its case upon a claim construction that it ascribes to Patent Owner, and then expressly criticizes as being inconsistent with the plain and ordinary meaning of the claim language and the ’347 patent Specification. Pet. 14–15. Additionally, Petitioner does not provide reasoning or evidence showing why the applied construction is correct, and Patent Owner does not agree with the construction in the Preliminary Response. Id. Under these facts, Petitioner has failed to set forth a sufficient basis for us to find a compelling case of unpatentability. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. Moreover, we find that the contrary cases upon which Petitioner relies are inapposite here because they involved alternative constructions advanced by the petitioner. For example, in 10X Genomics, the Board explained that: [E]ven if our rules and guidance were correctly interpreted as prohibiting a petitioner from relying solely on a claim construction it believes is incorrect, that is not what Petitioner has done here. Petitioner proposes alternative claim constructions and presents at least one ground of unpatentability for each construction. 10X Genomics, Paper 8 at 22 (emphasis added). Similarly, in Donnelly, also cited by Petitioner, the petition offered alternative constructions—the construction proposed by the patent owner in district court and the “proper construction” that the petitioner believed was the correct one. Donnelly, Paper 2 (Petition) at 29–33 (identifying alternative constructions of “grip portion”). For the foregoing reasons, we determine that Petitioner has not made a compelling, meritorious showing that “path parameter information,” as required by the challenged claims, is disclosed by or would have been obvious over Sesia. As a result, factor 6 does not weigh in favor of institution.” slip op. at 23

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Based on the present record, Petitioner has not presented a compelling, meritorious case that the challenged claims are unpatentable. Petitioner bases its case upon a claim construction that it ascribes to Patent Owner, and then expressly criticizes as being inconsistent with the plain and ordinary meaning of the claim language and the ’347 patent Specification. Pet. 14–15. Additionally, Petitioner does not provide reasoning or evidence showing why the applied construction is correct, and Patent Owner does not agree with the construction in the Preliminary Response. Id. Under these facts, Petitioner has failed to set forth a sufficient basis for us to find a compelling case of unpatentability. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. Moreover, we find that the contrary cases upon which Petitioner relies are inapposite here because they involved alternative constructions advanced by the petitioner. For example, in 10X Genomics, the Board explained that: [E]ven if our rules and guidance were correctly interpreted as prohibiting a petitioner from relying solely on a claim construction it believes is incorrect, that is not what Petitioner has done here. Petitioner proposes alternative claim constructions and presents at least one ground of unpatentability for each construction. 10X Genomics, Paper 8 at 22 (emphasis added). Similarly, in Donnelly, also cited by Petitioner, the petition offered alternative constructions—the construction proposed by the patent owner in district court and the “proper construction” that the petitioner believed was the correct one. Donnelly, Paper 2 (Petition) at 29–33 (identifying alternative constructions of “grip portion”). For the foregoing reasons, we determine that Petitioner has not made a compelling, meritorious showing that “path parameter information,” as required by the challenged claims, is disclosed by or would have been obvious over Sesia. As a result, factor 6 does not weigh in favor of institution.” slip op. at 23

  Claim constructionDiscretionary denial
  Patents in suitUS 8,891,347

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.