- Boe Technology Group Co., Ltd. v. Optronic Sciences LLCInstitution deniedPTAB · Jul 29, 2025 · IPR2025-00239 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing the district court schedule and Patent Owner’s settled expectations.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Granted
“particular, the projected final written decision due date for each of these cases is in October 2026. DD Req. 5. The district court’s scheduled trial date is May 4, 2026, and the time-to-trial statistics suggest that the trial would begin in July 2026. Id. As such, it is unlikely that a final written decision in these proceedings will issue before the district court trial occurs, resulting in significant duplication of effort, additional expenses for the parties, and a risk of inconsistent decisions. Further, the challenged patents 1 Citations are to papers in IPR2025-00238. The parties filed similar papers in IPR2025-00239. have been in force for approximately twelve years, creating strong settled expectations for Patent Owner. These considerations favor discretionary denial, and outweigh the considerations that counsel against it.” slip op. at 2
- Settled expectationsGranted
“Petitioner argues it has settled expectations that the challenged patents would not be asserted against it because the challenged patents are directed to technology that is fundamentally different from what Petitioner uses in its products. DD Opp. 9–13. Therefore, Petitioner contends it had no reason to challenge the claims of the patents in these proceedings until Patent Owner asserted the challenged patents in district court. Id. at 12.” slip op. at 2
- Director reviewDirector review, deniedDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,502,757 - SAP America, Inc. v. Valtrus Innovations Ltd.Institution deniedPTAB · Jul 10, 2025 · IPR2025-00417 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), declining to institute review.
RulingsDirector review decision- Settled expectationsGranted
“proceedings has been dismissed from the parallel district court proceeding with prejudice. See, e.g., IPR2025-00415, Paper 8, 2–3. As Patent Owner asserts, it is an inefficient use of Board resources to review these challenged patents that have been dismissed from the litigation. See id. In addition, the challenged patents in IPR2025-00415, IPR2025-00417, and IPR2025-00418 have been in force for approximately 20 years, creating strong settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). These circumstances tip the balance in favor of discretionary denial.” slip op. at 3
- Other 314aInstitution denied discretionary otherInstitution denied
“proceedings has been dismissed from the parallel district court proceeding with prejudice. See, e.g., IPR2025-00415, Paper 8, 2–3. As Patent Owner asserts, it is an inefficient use of Board resources to review these challenged patents that have been dismissed from the litigation. See id. In addition, the challenged patents in IPR2025-00415, IPR2025-00417, and IPR2025-00418 have been in force for approximately 20 years, creating strong settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). These circumstances tip the balance in favor of discretionary denial. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 6,823,409 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Jul 10, 2025 · IPR2025-00214 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), citing the parallel district court’s earlier trial and significant investment.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“of all relevant considerations, discretionary denial of institution is appropriate in these proceedings. This determination is based on the totality of the evidence and arguments the parties have presented.” slip op. at 2
- PTAB / AIA Trials › Discretionary denialGranted
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 9,997,240 - Neogenomics Laboratories, Inc. v. Natera, Inc.Institution deniedPTAB · Jun 12, 2025 · IPR2025-00455 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied institution under § 314(a), based on the parallel district court proceeding.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“proceeding is August 14, 2026. DD Req. 9. The district court’s scheduled trial date is October 10, 2025, and the time-to-trial statistics suggest trial will begin in February 2026. Id. at 13–14. As such, it is unlikely that a final written decision in this proceeding will issue before district court trial occurs. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. Further, as of the date Patent Owner filed its request, fact discovery was complete, expert discovery was already underway, final invalidity and infringement contentions had been exchanged, and the district court had issued a Markman order. DD Req. 17–21. According to Patent Owner, “[n]early all substantive work other than trial itself will be complete by the time of th[e] institution decision date.” Id. at 18. The substantial time and effort the parties and the district court have invested in the parallel proceeding strongly favors discretionary denial.” slip op. at 2
- Director reviewDirector review, grantedGranted
“After considering the parties’ arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in this proceeding. This determination is based on the totality of the evidence and arguments the parties have presented.” slip op. at 2
Discretionary denialPatents in suitUS 11,319,596 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing grantedPTAB · 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 denialPatents in suitUS 11,048,751 - Delta Electronics, Inc. v. Vicor CorporationInstitution deniedPTAB · May 17, 2024 · IPR2024-00134 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged, undisclaimed claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. 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; see also 37 C.F.R § 42.4(a) (2022) (“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 Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute inter partes review on any of the alleged grounds of unpatentability.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“it filed with the Office a statutory disclaimer of claims 22, 24, 39, and 40 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2028, 1; see Prelim. Resp. 7 n.1. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935)); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (holding that the Board’s interference jurisdiction under 35 U.S.C. § 291 required “the existence of an interference, and a claim that ‘never existed’ [due to a statutory disclaimer] cannot form the basis for an interference”); Facebook, Inc. v. Skky, LLC, CBM2016- 00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (precedential as to § II.B.2) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. Accordingly, no inter partes review will be instituted for disclaimed claims 22, 24, 39, and 40 of the ’950 patent. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our review of the record, we do not construe any limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy” and we do not discern any such controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’950 patent would have had “at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design of switching power converters, with more experience potentially substituting for education or vice versa.” Pet. 7 (citing Ex. 1003 ¶ 29; Ex. 1009 ¶¶ 35–38; Ex. 1010, 80). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. See generally Prelim. Resp. Additionally, Dr. Rivas-Davila applies Petitioner’s definition in his declaration. Ex. 2001 ¶ 64. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with (1) the problems addressed in the ’950 Patent and (2) the level of ordinary skill in the art reflected by the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,199,950 - Delta Electronics, Inc. v. Vicor CorporationInstitution deniedPTAB · May 17, 2024 · IPR2024-00187 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 22, and 31–35 were unpatentable under any asserted § 103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have at least a Master’s degree in electrical engineering and two or more years of work experience relating to power electronics and the design and control of switching power converters, with more experience potentially substituting for education, or vice-versa.” Pet. 14 (citing Ex. 1017, 79; Ex. 1003 ¶ 29).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, or decide whether the preamble of claim 1 is limiting, for purposes of this Decision.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner cites to Dr. Hopkins’ Declaration, which repeats nearly verbatim the contentions in the Petition, and then adds testimony that “[t]he resonant period and frequency is what the ’481 Patent refers to as the ‘standard’ operating period and frequency.” Pet. 32 (citing Ex. 1003 ¶ 81). Dr. Hopkins, however, does not provide any citation to the ’481 patent to support this testimony, nor any further explanation as to how or why the resonant period and frequency teaches the “standard operating period and frequency” recited in limitation 1[c]. Therefore, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory 17 As discussed below, Petitioner also relies on this theory for all of the remaining six challenges in the Petition, and does not provide further explanation in any of those challenges. Accordingly, as explained below, each of Petitioner’s remaining challenges is insufficient for the same reasons described here. assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 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.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,166,481 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01129 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Meta did not show a reasonable likelihood that claims 29, 31–44 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons explained below, we determine Petitioner has not shown that there is a 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 93. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny institution of an inter partes review of claims 29 and 31–44 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 14; Pet. 7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “[n]o formal claim constructions are necessary.” Pet. 7. Patent Owner proposes a claim construction for the claim 1 term of “forming a filter” and “filter” which are used in claims 29 and 44. Prelim. Resp. 12. As discussed below, we determine that Petitioner has not met its burden on the merits and, because the construction of these terms is not relevant to that determination, we need not address the construction of the terms that Patent Owner proposes for construction.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“a. Claim 29 We determine that Petitioner has failed to meet its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered claim 29 obvious. This determination is based on the evidence and argument presented for limitation [29b], so we solely address this issue below.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01083 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–9, 12, and 13 were obvious over Avendano ’880 and Hou.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 35 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity. Petitioner’s alternative argument, that “[a]s another example, a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity,” also fails. Id. at 36–37. This argument is untenable because Hou’s first minimum estimate unit 508 merely “estimates the minimum for the first electronic sound signal.” Ex. 1008, 5:36–38. Hou does not describe unit 508 as performing a calibration. Nor does Petitioner explain how Hou’s minimum estimate constitutes a calibration. Pet. 36–37. And Petitioner’s expert merely parrots the Petition. Ex. 1003 ¶ 135. Thus, Petitioner’s conclusory assertion is unpersuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We determine below that Petitioner has not met its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered independent claim 1 obvious. As the remaining claims all depend from claim 1 and Petitioner’s second challenge only addresses dependent claims, Petitioner’s failure to meet its burden on this challenge is dispositive, and we need not address Ground 2. See Pet. 1.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01130 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On June 27, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 27, 2023. Papers 2, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, on September 8, 2023, Petitioner filed an Unopposed Motion To Withdraw Motion For Joinder. Paper 8. We grant that motion.” slip op. at 2
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357
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.