- Azurity Pharmaceuticals, Inc. v. Exelixis Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 11,298,349 - Precision Cancer Technologies Inc. v. Oncoustics Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 11,602,330 - Crowdstrike, Inc. v. Gosecure, Inc.Institution deniedPTAB · May 9, 2025 · IPR2025-00069 · APJ Garth D Baer · IPR · Institution
The Board denied institution because the petition did not show that the prior art teaches creating a fingerprint at the virtual machine monitor, as claims 1–18 and 21–23 require.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification describes only fingerprint creation outside the virtual machine monitor because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. See Sur-reply 1– 2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not contest that Capalik’s fingerprint generation occurs outside the components that Petitioner identifies as the claimed virtual machine monitor. Reply 1–3; see Pet. 18–23 (mapping Capalik’s hypervisor kernel 516 to the claimed virtual machine monitor); id. at 30–31 (mapping Capalik’s processing module 508 and signature generation engine 530 to the claimed fingerprint creation); see also Prelim. Resp. 21–23 (explaining Petitioner’s mapping). Instead, Petitioner asserts that the at-issue claim language—“at the virtual machine monitor”—does not require “that each of the subsequently recited steps must be performed by or in the [virtual machine monitor],” but instead only requires “that the fingerprint is generated by the same decoy system that contains the [virtual machine monitor].” Reply 2. Petitioner argues that the intrinsic record supports its position because “[n]owhere in the ’697 Patent is there any teaching or suggestion that a [virtual machine monitor] creates a fingerprint/signature indicative of attack activity,” and instead, “[t]he ’697 Patent teaches that its signature generation engine is separate from the [virtual machine monitor].” Reply 2 (citing Ex. 1001, 8:12–19). In addition, Petitioner asserts that requiring fingerprint creation at the virtual machine monitor “directly” slip op. at 8
- Adverse judgmentOther
“D. Statutory Disclaimer and Remaining Challenged Claims The Petition challenges claims 1–23. Pet. 10. However, because Patent Owner disclaimed claims 19 and 20 (Ex. 2010), the remaining challenged claims are 1–18 and 21–23. See 37 C.F.R. § 42.107(e) (2020) (“No inter partes review will be instituted based on disclaimed claims.”). Of the remaining challenged claims, only claim 1 is independent. Claim 1 is reproduced below:” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 9,106,697 - Crowdstrike, Inc. v. Gosecure, Inc.Institution deniedPTAB · May 6, 2025 · IPR2025-00067 · APJ Garth D Baer · IPR · Institution
The Board denied institution for claims 1–23 because the cited art did not teach or suggest creating the claimed fingerprint at the virtual machine monitor.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’697 patent is unpatentable. We therefore do not institute trial on any challenged claims or grounds raised in the Petition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 9,106,697 - Manitowoc Foodservice Companies, LLC v. Gate CFV Solutions, IncInstitution deniedPTAB · 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 - Samsung Display Co., Ltd. v. Pictiva Displays Internaltional Ltd.Institution deniedPTAB · Nov 19, 2024 · IPR2024-00855 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv because the factors favored denial and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“We consider the following factors to assess “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.” 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.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We have authority to institute an inter partes review where a petitioner shows a reasonable likelihood of prevailing with respect to at least one challenged claim. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Under appropriate circumstances, however, we may exercise our discretion under Section 314(a) and deny review without regard to whether the petitioner has met that threshold. Trial Practice Guide,3 64; see 84 Fed. Reg. 64,280 (Nov. 21, 2019). For reasons that follow, we exercise our discretion under Section 314(a) and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“On this record, we discern a genuinely-disputed issue surrounding the correct construction of the first wavelength spectrum limitation. Specifically, a question arises whether the first wavelength spectrum limitation can be 13 Neither party identifies the litigation involving Petitioner’s real parties-ininterest as related to this proceeding. Pet. 1; Paper 5, 1. That litigation, however, involves assertions of the ’547 patent claims against Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. Ex. 2053, 1, 8; see Pet. 1 (identifying those entities as Petitioner’s real parties-in-interest). met by a portion of the radiation emitted by the organic layer (as argued by Petitioner); or instead, the first wavelength spectrum limitation refers to the entirety of the radiation emitted by the organic layer (as argued by Patent Owner). Compare Pet. 23–25, 57–58, with Prelim. Resp. 64–74. To be clear, we need not and, therefore, do not resolve the correct construction of the first wavelength spectrum limitation. It is enough for us to observe, on this record, that a genuinely-disputed issue surrounds this issue of claim construction. As explained in the next section, that dispute casts doubt upon whether Petitioner shows sufficiently, for purposes of trial institution, that the prior art suggests the filter transparency limitation.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“14 Petitioner belatedly suggests that an ordinarily skilled artisan would have been prompted to replace the emitter material employed by the prior art (namely, BCzVBi in DPvBi) with a different, but undisclosed, emitter material having “no significant emission at wavelengths above 500 nm.” Opp. Supp. Br. 2 (citing Ex. 2010 ¶ 43); see Reply 3–4 (same). That argument is not presented in the Petition, much less supported in the Petition by a rationale to combine. See Pet. 16–17, 48–50 (mapping the organic layer sequence of claim 1 to the organic layer sequence of Igarashi or Shiotani, which both employ BCzVBi in DPvBi as the emitter material (Ex. 1004 ¶ 88; Ex. 1005, 5/12)).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,314,547 - 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 · GrahamPatents in suitUS 11,019,557 - Nearmap US, Inc. v. Pictometry International Corp.Institution deniedPTAB · Oct 10, 2024 · IPR2024-00729 · APJ Russell E Cass · IPR · Institution
The Board denied institution on all grounds because the Petition did not sufficiently explain how the asserted references teach claim 1’s control data limitation or establish unpatentability of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The question before us is not whether we could come up with a way to understand how the asserted prior art could render the challenged claims unpatentable, but rather did Petitioner provide the arguments and evidence to show that the challenged claims are unpatentable. Here, Petitioner has not met that burden and as such, Petitioner has not shown by a reasonable likelihood that any of the challenged claims are unpatentable.” slip op. at 22
- BurdenDenied
“contentions with sufficient particularity. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”). We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the Petition fails to sufficiently explain how the combination of Loewen and Fujimoto teaches the “control data” in Petitioner’s proposed construction. Neither Petitioner’s claim chart for limitation [1.f] nor the other portions of the Petition identified in Petitioner’s Reply identify what disclosure in Loewen or Fujimoto corresponds to this “control data,” or why this “control data” would be inherent in the disclosures of those references. Additionally, as discussed above, to the extent Petitioner is relying on Dr. Forsyth’s Declaration to provide argument not set forth in the Petition, such reliance would be an improper incorporation by reference. And, in any event, Dr. Forsyth also does not identify with specificity what disclosures of Loewen or Fujimoto correspond to the “control data” in Petitioner’s proposed construction. Finally, Petitioner’s Reply does not explain how Loewen’s disclosure that the computer “triggers” the still cameras to capture images involves “control data,” or why one of ordinary skill would understand that “control data” is necessarily sent as part of this “triggering.” Consequently, we determine that Petitioner has failed to sufficiently show that the combination of Loewen and Fujimoto teaches element [1.f], and thus has failed to establish a reasonable likelihood that claim 1 is unpatentable over this combination. Because Petitioner’s other grounds are all directed to claims that depend from claim 1, Petitioner has failed to sufficiently show unpatentability of those claims as well.” slip op. at 25
§ 103 obviousnesscites KSRPatents in suitUS 9,182,657 - Nearmap US, Inc. v. Eagle View TechnologiesInstitution deniedPTAB · Oct 9, 2024 · IPR2024-00716 · APJ Stacey G White · IPR · Institution
The Board denied institution because the Petition did not explain with particularity how the cited references taught the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “a bachelor’s degree or higher in computer science, computer engineering, or an equivalent educational background, or at least five years of industry experience in software development. Pet. 17 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not address the level of ordinary skill in the art in its papers. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 7
- BurdenDecided for patent owner
“We agree with Patent Owner. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13
Claim constructioncites PhillipsPatents in suitUS 10,671,648 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 9,880,715
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.