- Tesla, Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 11, 2025 · IPR2025-00218 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the Kim and Vayanos combination did not show that each individual bit indicates a separate time interval, as required by claims 1–12.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“limitation 1.2 because it is more consistent with the claim language and the specification of the ’416 patent. The language “each of the plurality of bits” clearly individualizes the “plurality of bits” and the language “indicates a respective time interval that physical shared channel resources are utilized to signal channels” clearly ascribes to each individual bit the function of identifying a time interval that is separate from the time interval(s) that the other individual bit(s) identify. Petitioner’s claim constriction argument largely ignores the words used in limitation 1.2. Petitioner fails to provide anything to explain how or why the plain meaning of “each” and “respective” in the context of limitation 1.2 could be understood by a skilled artisan to connote something other than the plurality of bits individually identifying a separate and distinct time interval (i.e., a “one-to-one correspondence”). Petitioner similarly does not identify anything from the specification of the ’416 patent that would support deviating from the plain meaning of limitation 1.2. And Petitioner’s reliance on 3M Innovative Properties appears to miss the mark. Pet. Reply 7. In that case, the Federal Circuit held that, when a claim term has an “ascertainable definition in the body of the claim,” their “cases do not support prescribing a more particularized meaning unless a narrower construction is required by the specification or prosecution history.” 3M Innovative Properties Co., 725 F.3d at 1329. Here, however, Patent Owner is not attempting to import a more particularized meaning into limitation 1.2, but to demonstrate that the ’416 specification is consistent with the ascertainable definition of “each” and “respective” within the context of limitation 1.2. In particular, Patent Owner highlights that the ’416 specification describes the resource allocation technique as using an indicator bit, within a plurality of indicator bits, that has a one-to-one correspondence to a specific time window established for a Forward Access Channel (FACH). See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9; PO Resp. 11–14, 19–20; PO Sur-reply 2–3; Ex. 2001 ¶¶ 36–40, 49. And we agree that the ’416 specification informs, and is consistent with, the plain reading of limitation 1.2. See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9. Therefore, we determine that the plain and ordinary meaning of limitation 1.2 requires all the plurality of bits to individually identify a separate and distinct time interval that physical shared channel resources are utilized to signal channels.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“PICH, which is communicated to Kim’s receiver, has a plurality of bits, the evidence fails to demonstrate sufficiently that each of those bits indicates a respective time interval that physical shared channel resources are utilized to signal channels, as limitation 1.2 recites. As Patent Owner correctly argues, the Vayanos paging indicators use multiple bits to indicate information about a single time interval in a frame, rather having several bits that individually identify a separate and distinct time interval. PO Resp. 39–41 (citing Ex. 2001 ¶¶ 67, 74–75). Vayanos teaches that “[t]he number of paging indicators (Np) in each PICH frame is configurable by the system and can take on a value of 18, 36, 72 or 144,” and that “[e]ach paging indicator is sent in 288/Np consecutive bits in the PICH frame, where 288/Np can take on a value of 16, 8, 4 or 2.” Ex. 1006, 3:26–34. As a result, if there are 18 (Np = 18) paging indicators, 288/NP = 288/18 = 16 (meaning that each paging indicator is 16 bits long), if there are 36 (Np = 36) paging indicators, 288/Np = 288/36 = 8 (meaning that each paging indicator is 8 bits long), if there are 72 (Np=72) paging indicators, 288/Np = 288/72= 4 (meaning that each paging indicator is 4 bits long), and if there are 144 (Np=144) paging indicators, 288/Np = 288/144 = 2 (meaning that each paging indicator is 2 bits long). Ex. 2001 ¶ 66. Each paging indicator (singular) taught by Vayanos includes multiple bits––each paging indicator (singular) has either 16, 8, 4 or 2 bits–– and Vayanos does not disclose or suggest a paging indicator that indicates a time interval with only a single bit. Id. And Petitioner does not cite Kim to show the number of bits used to indicate a time interval; only to show that a UE would receive broadcast information with paging information including paging indicators that identify a time interval in which physical shared channel resources are utilized to signal channels. See Pet. 40–49. Even accepting that the Kim/Vayanos combination discloses a UE receiving a paging indicator that is indicative of a time interval in which a Paging Channel PCH may be found or indicative of whether a frame will include a signaling channel (e.g., PCH) at a specific TTI within that frame, the combination does not disclose or suggest using a paging indicator that is a single bit indicating either of those time intervals. On the contrary, as noted above, Vayanos teaches that all paging indicators consist of multiple bits and, thus, the Kim/Vayanos combination discloses a UE that only receives and uses a plurality of bits to indicate a time interval that physical shared channel resources are utilized to signal channels. This is insufficient to show a reasonable likelihood that Petitioner will be able to establish that the Kim/Vayanos combination discloses or suggests receiving a plurality of bits wherein the individual bits each identify a separate and distinct time interval. Therefore, Petitioner has not shown sufficiently that the Kim/Vayanos combination discloses or suggests the subject matter limitation 1.2 recites. For the above reasons, we are not persuaded that Petitioner has shown sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4 IV. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’416 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,136,416 - Samsung Electronics Co., Ltd v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Mar 21, 2025 · IPR2024-01350 · APJ Michael T Cygan · IPR · Institution
Institution was denied for claims 1–15 because Petitioner did not show the asserted references were prior art; the claims were supported by the ’330 application’s 2005 filing date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To prevail on its obviousness challenges, Petitioner must show that the ’848 patent is not entitled to the benefit of the ’330 application. This issue is dispositive because none of the references relied on by Petitioner qualify as prior art if the ’848 patent is entitled to the benefit of the May 26, 2005, filing date of the ’330 application. Pet. 6, 13. We start by explaining why Petitioner bears the burden of persuasion.” slip op. at 9
- BurdenDecided for patent owner
“1. The Burden of Persuasion “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). That burden, termed the burden of persuasion, “is the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). That burden never shifts to the patentee. Id. at 1379. In order for an inter partes review to be instituted, “the information presented in the petition filed under section 311 and any response filed under section 313 [must] show[] that there is a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“d) Analysis Petitioner has not shown a reasonable likelihood that it would prevail in showing that its asserted references, including Steuer 750 which is a publication of the ’330 application, are prior art to the ’848 patent. Petitioner has not shown that the ’330 application fails to provide written description support for claim 1 of the ’848 patent, which recites “video data” samples and representations.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“a chain of priority from the ’330 application to the ’848 patent contain at least the same disclosure as the ’330 application, Petitioner has not shown that the ’848 patent should not be given the benefit of the effective filing date of the ’330 application. The May 26, 2005 filing date of the ’330 application predates the December 1, 2005 publication date of Steuer 750, the August 13, 2013 issue date of Steuer 768, and the December 2, 2010 and May 27, 2010 publication and filing dates of Neumeier.10 Pet. 7; Ex. 1005, code (43); Ex. 1006, code (45); Ex. 1007, codes (43), (60).11 Therefore, Petitioner has not shown by a preponderance of the evidence that any of the asserted claims in the ’848 patent would have been obvious over the asserted combinations of Steuer 750, Steuer 768, and Neumeier.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,719,848 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 12, 2025 · IPR2024-01058 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted § 103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 137–144. The reason Petitioner’s reliance on paragraph 72 of Wang777 is unavailing is because we are not persuaded that it discloses or suggests using two different content identifiers to identify a channel. When viewing the cited portions of that paragraph in the proper context of what Wang777 teaches as a whole (as we are required to do), we are not persuaded a skilled artisan would understand that the disclosed additional and different content identifiers in the alleged play stream are being used to identify a channel.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“claims issued in the ’849 patent. Pet. 40–103. Patent Owner contends that 35 U.S.C. § 325(d) applies to this case and that we should discretionarily deny institution. Prelim. Resp. 7–19. Patent Owner also asserts that Petitioner’s challenges are deficient under § 314(a); in particular, Patent Owner disputes the sufficiency of Petitioner’s evidence to show the prior art discloses or suggests claim elements 1.3, 6.3, and 10.3 of the independent claims. Id. at 20–62. Although Patent Owner’s arguments applying § 325(d) and Advanced Bionics, 4 U.S. Patent Application Publication No. US 2004/0260682 A1, published December 23, 2004 (“Herley”) (Ex. 1011). 5 U.S. Patent Application Publication No. US 2005/0193016 A1, published September 1, 2005, filed February 17, 2005 (“Seet”) (Ex. 1012). 6 U.S. Patent Application Publication No. US 2002/0116195 A1, published August 22, 2002 (“Pitman”) (Ex. 1013). 7 U.S. Patent Application Publication No. US 2003/0018709 A1, published January 23, 2003 (“Schrempp”) (Ex. 1014). 8 U.S. Patent Application Publication No. US 2003/0086341 A1, published May 8, 2003 (“Wells”) (Ex. 1015). Paper 6, (PTAB Feb. 13, 2020) (precedential) are sound, we decline to exercise our discretion. Nevertheless, as discussed below, our merits analysis also leads to denial of the Petition because the cited evidence fails to persuade us that Petitioner is reasonably likely to prevail on any claim challenged.” slip op. at 7
- Skill levelSkill level board ownOther
“We agree with Patent Owner that a person can qualify as a skilled artisan based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’849 patent. We disagree, however, that industry experience with ACR systems is required to qualify as a skilled artisan. The ’849 patent describes a media usage monitoring and measurement method that relies on “known content recognition methods,” including known ACR. Ex. 1001, code (54), 5:48–54. The claimed invention relates to analyzing sample sequence data to enhance content identification and to establish channel identification. Id. at code (57), 15:14–32 (claim 1). The ’849 patent relies upon known ACR systems, but does not claim a new method of content recognition such that industry experience designing or implementing ACR systems is required. We accept that such experience may assist in providing relevant industry experience. For these reasons, we determine that a skilled artisan would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a skilled artisan based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 137–144.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,719,849 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 12, 2025 · IPR2024-01055 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we do not institute an inter partes review because the information presented in the Petition, in view of the Preliminary Response, does not show that Petitioner is reasonably likely to prevail with respect to at least 1 of the claims challenged.” slip op. at 2
- Skill levelSkill level board ownOther
“We agree with Patent Owner that a person can qualify as a skilled artisan based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ‘622 patent. We disagree, however, that industry experience with ACR systems is required to qualify as a skilled artisan. The ‘622 patent describes a media usage monitoring and measurement method that relies on “known content recognition methods,” including known ACR. Ex. 1001, code (54), 5:38–44, 5:59–6:13. The claimed invention relates to analyzing sample sequence data to enhance content identification and to establish channel identification. Id. at code (57), 14:37–51 (claim 1). The ‘622 patent relies upon known ACR systems, but does not claim a new method of content recognition such that industry experience designing or implementing ACR systems is required. We accept that such experience may assist in providing relevant industry experience. For these reasons, we determine that a skilled artisan would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a skilled artisan based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 135–142. The reason Petitioner’s reliance on paragraph 72 of Wang777 is unavailing is because we are not persuaded that it discloses or suggests using two different content identifiers to identify a channel. When viewing the cited portions of that paragraph in the proper context of what Wang777 teaches as a whole (as we are required to do), we are not persuaded a skilled artisan would understand that the disclosed additional and different content identifiers in the alleged play stream are being used to identify a channel.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “none of the claim terms require explicit constructions” and “all claim terms have been given their plain and ordinary meaning, in the context of the ’622 patent specification, under the Phillips standard.” Pet. 20. Patent Owner does not dispute this contention (see generally Prelim. Resp.) and its declarant, Mr. Hoarty, states that he “applied the plain and ordinary meaning of all claim terms at issue” (Ex. 2001 ¶ 52). are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’622 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,756,622 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 10, 2025 · IPR2024-01054 · APJ Michael T Cygan · IPR · Institution
Institution denied for claims 1–15 because Petitioner did not show Seet was prior art, defeating the reasonable-likelihood showing for every asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any one of claims 1–15 of the ’768 patent. Accordingly, we do not institute an inter partes review of the ’768 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We agree with Patent Owner that Petitioner has not met its burden to show that Seet is prior art. Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional. See Dynamic Drinkware, 800 F.3d at 1381–82. As the “‘hallmark’ of written description, . . . the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted).” slip op. at 12
- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’768 patent and the prior art of record.” slip op. at 7
Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,510,768 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 10, 2025 · IPR2024-01057 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood of proving claims 1–15 unpatentable; Seet was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Without the benefit of its provisional filing date, Seet, filed on February 17, 2005, is not prior art to the ’848 patent, having an uncontested benefit to the May 27, 2004 filing date of its provisional. Because each of Petitioner has not shown a reasonable likelihood of prevailing on any of its unpatentability assertions. III. CONCLUSION For the reasons discussed above, we conclude Petitioner has not shown a reasonable likelihood of prevailing with respect to any of claims 1–15. We determine that the record does not support institution. Accordingly, no inter partes review is instituted.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media. The disclosure of the Seet provisional, however, is more limited and defines the term media exclusively as audio. Ex. 1019, 4 (“Media will be defined as any streaming audio source in any form, be it radio, television, cable, satellite, internet stream, or the like.”). This definition does not include the full scope of “media” as that term is used in claim 9 of Seet because it does not include video, software, and pictures.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–8. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’848 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Here, neither party sets forth any explicit claim construction. Pet. 14; Prelim. Resp. Although Patent Owner analyzes the term “media monitoring device” in its arguments (Preliminary Response 37–43), our ultimate determination on institution does not turn on that construction. We determine that no need exists to determine a particular construction for purposes of this institution decision, and instead construe the claims pursuant to § 42.100(b).” slip op. at 8
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 10,719,848 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 5, 2025 · IPR2024-01056 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–11 were unpatentable over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“We agree with Patent Owner that a person can qualify as a POSA based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’896 Patent. We disagree, however, that industry experience with ACR systems is required to qualify as a POSA. The ’896 Patent describes a media usage monitoring and measurement method that relies on “known content recognition methods.” Ex. 1001, code (54), 5:48–52. The claimed invention using certain data, including content identification results. Id. at code (57), 15:12–35. The ’896 Patent does not claim a new method of content recognition. For these reasons, we determine that a POSA would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a POSA based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claims and Specification are consistent with defining “offset” as relative, rather than absolute. Claim elements 1.4 and 9.5 each recite: “a content offset indicating a time position of a content identification result within identified content.” Ex. 1001, 15:24–26, 16:25–27 (emphasis added). In our view, “a time position . . . within identified content” means the time position is relative to a reference point within the identified content. Our understanding of the claim language is reinforced by the Specification. According to the ’896 Patent, content offset data are shown in Figure 5, but not Figure 4. Ex. 1001, 9:22–26. Figures 4 and 5 both show a series of log times and corresponding content IDs, where the log time indicates when a sample began to be captured. Id. at 9:29–32, 9:40–45, 11:32–35, Figs. 4, 5. Figure 5 additionally includes a “content offset” column, as illustrated below. Id. at Fig. 5 (excerpt). According to the ’896 Patent, Each content offset value represents a time offset from the beginning of a particular piece of content. For example, row 8 of Play Stream 510 corresponds to a sample whose beginning is located 9 time units from the beginning of TV program 27, thus the content offset is referenced as (0)+9. Id. at 11:41–46. Although both the log time and content offset are expressed in relative terms in the Figure 5 example, only the content offset is relative to a reference point within the identified content, in this case the beginning of the content. Id. at 9:40–45, 11:41–46.” slip op. at 12
- Expert testimonyOther
“We have considered Dr. Russ’s testimony pertaining to claim elements 1.1 and 9.1 and Feininger. Ex. 1003 ¶¶ 136–142, 179. Dr. Russ testifies that Feininger’s “[p]resentation time retriever 56 . . . retrieves a ‘program identifier [(content identification results)] from the packet header of the section of the recorded program currently being played back and store[s] that identifier in one or more program identification fields 68.’” Ex. 1003 ¶ 137 (citing Ex. 1005, 5:28–42). Like Petitioner, Dr. Russ does not take into account the description of “content identification” provided earlier in his testimony. Ex. 1003 ¶ 41 (citing Ex. 1001, 5:48–66). Dr. Russ does not assert that Feininger discloses content identification. Without content identification, there can be no content identification results. Dr. Russ further testifies that Feininger’s apparatus 50 “generates the ‘play stream of content identification results’ based on the data samples submitted to data logging device 26.” Ex. 1003 ¶ 139 (citing Ex. 1005, 4:4–13). Missing from this testimony is any opinion about whether Feininger’s apparatus 50 or data logging device 26 performs content identification. Dr. Russ does not point to any teaching or suggestion in Feininger that extracted program identifiers 68 result from content identification.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,572,896 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 5, 2025 · IPR2024-01053 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“We agree with Patent Owner that a person can qualify as a POSA based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’791 Patent. We disagree, however, that industry experience with ACR systems is required to qualify as a POSA. The ’791 Patent describes a media usage monitoring and measurement method that relies on “known content recognition methods.” Ex. 1001, code (54), 5:38–42. The claimed invention using certain data, including content identification results. Id. at code (57), 14:38–59 (claim 1). The ’791 Patent does not claim a new method of content recognition. For these reasons, we determine that a POSA would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a POSA based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 9
- Expert testimonyOther
“We have considered Dr. Russ’s testimony pertaining to claim elements 1.1 and 9.1 and Feininger. Ex. 1003 ¶¶ 135–141, 170. Dr. Russ testifies that Feininger’s “[p]resentation time retriever 56 . . . retrieves a ‘program identifier [(content identification results)] from the packet header of the section of the recorded program currently being played back and store[s] that identifier in one or more program identification fields 68.’” Ex. 1003 ¶ 137 (citing Ex. 1005, 5:28–42). Like Petitioner, Dr. Russ does not take into account the description of “content identification” provided earlier in his testimony. Ex. 1003 ¶ 41 (citing Ex. 1001, 5:38–55). Dr. Russ does not assert that Feininger discloses content identification. Without content identification, there can be no content identification results. Dr. Russ further testifies that Feininger’s apparatus 50 “generates the ‘play stream of content identification results’ based on the data samples submitted to data logging device 26.” Ex. 1003 ¶ 139 (citing Ex. 1005, 4:4–13). Missing from this testimony is any opinion about whether Feininger’s apparatus 50 or data logging device 26 performs content identification. Dr. Russ does not point to any teaching or suggestion in Feininger that extracted program identifiers 68 result from content identification.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claims and Specification are consistent with defining “offset” as relative, rather than absolute. Claim elements 1.4 and 9.5 each recite: “a content offset indicating a time position of a content identification result within identified content.” Ex. 1001, 14:51–53, 16:7–9 (emphasis added). In our view, “a time position . . . within identified content” means the time position is relative to a reference point within the identified content. Our understanding of the claim language is reinforced by the Specification. According to the ’791 Patent, content offset data are shown in Figure 5, but not Figure 4. Ex. 1001, 9:22–26. Figures 4 and 5 both show a series of log times and corresponding content IDs, where the log time indicates when a sample began to be captured. Id. at 9:16–19, 9:27–31, 11:10–22, Figs. 4, 5. Figure 5 additionally includes a “content offset” column, as illustrated below. Id. at Fig. 5 (excerpt). According to the ’791 Patent, Each content offset value represents a time offset from the beginning of a particular piece of content. For example, row 8 of Play Stream 510 corresponds to a sample whose beginning is located 9 time units from the beginning of TV program 27, thus the content offset is referenced as (0)+9. Id. at 11:22–26. Although both the log time and content offset are expressed in relative terms in the Figure 5 example, only the content offset is relative to a reference point within the identified content, in this case the beginning of the content. Id. at 9:27–31, 11:22–26.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,296,791 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 9, 2024 · IPR2024-00445 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims. And as a result, based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’682 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 24
- BurdenNot shown unpatentable
“testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“After studying Cioffi, in view of Petitioner’s contentions and the testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“Pet. 17 (citing Ex. 1102 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 6, 2024 · IPR2024-00444 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Saey or Gross taught the claimed composite SNR metric for a service group of cable modems.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in computer or electrical engineering, computer science, information systems, or a similar discipline, along with at least three-to-four years of experience with the design and/or implementation of network-based content delivery systems, such as video-on-demand cable systems and Internet video streaming. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 10 (citing Ex. 1002 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such 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). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning.” Pet. 11. Patent Owner does not suggest otherwise. See generally Prelim. Resp. For the purposes of this Decision, we determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“D. Petitioner Has Not Established Sufficiently That the Prior Art Discloses or Suggests Each and Every Limitation Recited by Independent Claims 1 and 10 Limitations [1D] and [10D] of challenged independent claims 1 and 10 recite “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst-case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” Ex. 1001, 8:10–15 (Limitation [1D]), 9:22–26 (Limitation [10D]). And each ground in this Petition, directly or indirectly, depends on the sufficiency of Petitioner’s contention that either Saey or Gross disclose or suggest that limitation. See Pet. 19–23, 28–31, 52–54, 57–59, 75. After studying the submissions of both parties and the evidence of record, however, we determine there is insufficient support for that contention to satisfy Petitioner’s burden for instituting inter partes review. And because this deficiency is dispositive of the Petition, we focus our discussion below accordingly, after we first provide an overview of Saey and Gross.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682
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.