- Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution deniedPTAB · Oct 20, 2025 · IPR2025-00480 · APJ Lisa A Murray · IPR · Institution
The Board denied institution because the Elliott/Jacob grounds did not show a reasonable likelihood that claims 1–15 were unpatentable, and Musk did not cure the deficiencies.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c) Summary We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a Bachelors’ degree in electrical or computer science or a comparable field of study, plus at least three years of professional experience in advertisement delivery systems or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 3; Ex. 1002 ¶ 79. Patent Owner does not offer a competing formulation, stating that “[f]or purposes of this preliminary response only, Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 12. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’296 Patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After reviewing the parties’ arguments and evidence, we determine that no express constructions of the terms identified by Petitioner are needed 6 For the term “recording a request identifier associated with the request,” Petitioner asserts that it is unclear which “request” is at issue, Pet. 7–8, while Patent Owner argues that “the ‘request’ refers to the ‘request for content to be used within the registered application program’ as described in claim element 1.h.” Prelim. Resp. 13. For the reasons discussed below, we determine that it is not necessary for us to construe this term for purposes of this Decision. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). C.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“as obvious over the combination of Elliott and Jacob. Pet. 9–60. Patent Owner contests Petitioner’s mapping of the cited prior art to four limitations in independent claim 1 (and the commensurate limitations in independent claims 6 and 11): limitations [1.a], [1.b], [1.d], and [1.e]. Prelim. Resp. 14– 39. Patent Owner also argues that one of ordinary skill in the art would not have been motivated to modify Elliott with the teachings of Jacob. Id. at 39– 46. We agree with Patent Owner that the proposed combination does not teach or suggest elements [1.a] and [1.e], for the reasons discussed below. Because the absence of these two elements from the cited prior art is a sufficient basis for denying institution, we do not address Patent Owner’s remaining arguments.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,433,296 - Exactech, Inc. v. Zimmer, Inc.Institution deniedPTAB · Nov 9, 2022 · IPR2022-00840 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 18–21 because Petitioner did not show a reasonable likelihood that DeOrio and Stulberg rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“press-fit or screwed to the tibia. Pet. 33. Petitioner and its declarant, Mr. Drewry, rely on column six, lines 28–33 and Figure 4 to support the contention that “DeOrio discloses an intramedullary rod 28 that is secured to the tibia by being press-fit or screwed into a bore drilled into the intramedullary canal of the tibia.” Id. (emphasis added) (citing Ex. 1004, 6:28–33, Fig. 4; Ex. 1003 ¶¶ 50, 73); Ex. 1003 ¶ 73 (citing Ex. 1004, 6:28–33, Fig. 4). However, DeOrio makes no such disclosure of a press-fit or screwed connection between the intermedullary rod and the tibia. The relevant portion of column six discloses only that “a bore is drilled into the intramedullary canal of a patient’s tibia.” Ex. 1004, 6:30–31. Figure 4 illustrates shaft 30 of intermedullary rod 28 extending into the tibia, presumably in the bore drilled therein. DeOrio does not provide details regarding how the intermedullary rod is positioned within the bore, and certainly makes no disclosure of a press-fit or screwed connection as asserted by Petitioner. Thus, DeOrio does not support Petitioner’s contentions.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“For at least the foregoing reasons, Petitioner has not shown sufficiently that DeOrio discloses or teaches a fastener as recited in claim 18. Petitioner’s reliance on Stulberg to teach a computer-assisted tracking system does not correct this deficiency. See Pet. 38–41. Therefore, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 18 or its dependent claims 19–21 would have been obvious in view of DeOrio and Stulberg.” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,029,477 - PTAB · Jul 14, 2022 · IPR2022-00411 · APJ Paul J Korniczky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6–9, 11, or 13 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“authority to institute an inter partes review if “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) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we deny Petitioner’s request to institute an inter partes review of claims 1, 2, 6–9, 11, and 13 of the ’690 patent.” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“2 The substantive discussion in Petitioner’s three declarations are essentially identical to each other and to the Petition. For example, pages 40–74 of the Petition are essentially identical to a single paragraph in each of the declarations –– Hopkins Decl. ¶ 88 on pages 54–92, Keough Decl. ¶ 88 on pages 63–97, and Denton Decl. ¶ 65 on pages 46–81. Thus, we question whether the declarations provide independent analysis and we give the declarations little, if any, weight. See Intex Recreation Corp. et al. v. Team Worldwide Corp., IPR2018-00875, Paper 129 at 40, n. 15 (PTAB Sept. 11, 2019) (“We further note that Dr. Stevick’s testimony is nearly identical to the language appearing in the Patent Owner Response, down to the case citation. This identity in language causes us to attribute less weight to a declarant’s testimony.” (citations omitted)).” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that Petitioner’s definition is unclear. Prelim. Resp. 14. Petitioner’s definition includes unclear and subjective requirements such as that the person of ordinary skill in the art have (a) worked “long enough to be aware of” certain items, including unexplained “primary existing RV features,” (b) familiarity with unexplained “common terminology,” (c) “good mechanical aptitude,” (d) “good spatial perception,” (e) “significant experience” with a wide variety of roles, and (f) “sufficient awareness of the various governmental regulations applicable to RVs.” Id. (citing Pet. 18–20). Patent Owner’s proposed definition of the person of ordinary skill in the art appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’690 patent. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Patent Owner.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“While we generally agree with Patent Owner that a person of ordinary skill in the art would understand that a truss and beam, as used in the ’690 patent, are two different structures, serve different purposes, and provide different benefits to the overall design of a chassis, Patent Owner identifies the function, but not the structure, of a truss and beam. After considering the extrinsic and intrinsic evidence, we construe: (1) a beam to be a “body, with one dimension large compared with the other dimensions, configured to carry lateral loads (perpendicular to the large and bending dimension) and bending movements;” and (2) a truss to be a “frame built from members in tension and compression.” These definitions are consistent with the support structures shown in Figures 7 and 9 and discussed in column 3, lines 21–48 of the Specification. Referring to Figures 7 and 9, for example, truss 93C is a frame built from members in tension and compression and beam 93D has one large dimension and supports loads applied to its perpendicular axis. In addition, third section 93 of chassis 90 has beams, not trusses. Ex. 1001, 3:26–28.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,046,690 - Helen Of Troy Limited v. Tomy International, Inc.Institution deniedPTAB · Feb 7, 2022 · IPR2021-01208 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on claims 1–21 because the Petition did not show a reasonable likelihood of prevailing on anticipation by Song or obviousness over Song alone, with Kilion, or with Kassai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’176 patent “would be someone with a Bachelor’s degree in industrial design or furniture design with a focus on designing adjustable or reconfigurable furniture, or with one to two years of experience designing adjustable furniture or other products for infants or children.” Pet. 9 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not submit a different level of ordinary skill than the Petitioner.” Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe any special claim constructions are required for the Board to conclude that the asserted prior art renders the challenged claims unpatentable.” Pet. 9. Patent Owner generally agrees, stating that “the Board does not need to construe the claims to deny institution.” Prelim. Resp. 11. We determine that for the purposes of this Decision, it is unnecessary to expressly construe these claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs in the context of an inter partes review).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“that Patent Owner has the better position. With respect to Petitioner’s annotated versions of Song’s Figures 2 and 3, we agree that Petitioner’s arguments are not supported. To be sure, drawings may be relied upon for the purposes of anticipation. In re Bager, 47 F.2d 951, 953 (CCPA 1931) (“Description for the purposes of anticipation can be by drawings alone as well as by words.” (citation omitted)). Nonetheless, an ambiguous reference cannot anticipate a claim. Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). With respect to Figure 3, Song does not expressly teach that the bottom portion of water tank 3 is rigid. Rather, Song teaches that water tank 3 is made with foldable wall 2 that can be folded inward. Ex. 1005, 3. The support legs are also foldable to the inside of support levers 4 and each part can be joined and affixed in a small volume. Id. In other words, the walls, legs, and levers are folded together into a small volume to make the bathtub “convenient to carry.” Id. As such, we agree with Patent Owner that Figure 3 may very well depict the folded bathtub with a taut or folded wall (including the tank bottom) rather than a rigid material. The point, here, though is that we cannot tell from Figure 3 why the tank bottom is depicted as it is shown. Moreover, Song’s express description of the folded bathtub shown in Figure 3 does not support Petitioner’s position that the straight tank bottom must be rigid. Similarly, it is ambiguous as to whether Figure 2 uses cross-hatching to depict a rigid material for any illustrated structural components. Indeed, the left-side leg attachment of Figure 2 shows white dots against black. Id. at Fig. 2. But at the opposite side, the companion leg attachment near “6” does not show the same pattern. Id. Moreover, lid body 9, which is made from a synthetic resin, has no cross-hatching. Id. Further, the pattern presented in the magnified version (provided by Patent Owner) of Figure 2 shows uneven and inconsistent markings at the bottom of water tank 3. Thus, it is unclear whether the identified portion at the tank bottom contains any cross-hatching or intentional markings. Likewise, even if we were to apply purported drafting conventions (e.g., MPEP § 608.02) to a Japanese patent application, the relied upon markings shown in Figure 2 still do not show cross-hatching “with sufficient precision and detail to establish that the subject matter existed in the prior art.” Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,545,176 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 24, 2021 · IPR2020-01388 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 1–23 because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute only when “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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4 (citing Ex. 1002 ¶¶ 26–29). Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art often 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). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Patent Owner also argues that the Petition does not set forth adequate rationale for modifying Cohen to include Yonebayashi’s alleged recognition of pronouns because Cohen’s system presents a “yes-no question” to the user and the “yes” answer is enough for Cohen’s system to reserve a rental car. Prelim. Resp. 18–19. We agree. Petitioner relies on Cohen’s disclosure of presenting to the user questions the answers to which are one word. Pet. 22 (citing Ex. 1012, 19:1–10, 19:24–31), 25 (citing Ex. 1012, 19:8–13, 19:24–34). In each of these examples cited by Petitioner, the user responds by saying “yes.” Ex. 1012, 19:11, 19:32. Petitioner does not explain persuasively why it would be obvious to change this one-word response to include additional words, including pronouns, or why this modification would be of any benefit. Furthermore, even if a user’s utterance were to include the other words as suggested by Petitioner, Petitioner does not explain persuasively why it would be obvious to modify Cohen’s system to look to those additional words instead of the uttered “yes” to which Cohen’s system already responds and which remains in Petitioner’s modified utterances. See Pet. 27 (suggesting that the user respond by saying “Yes, I need that” or “Yes, reserve it” (emphases omitted)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,269,097 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 4, 2021 · IPR2020-01380 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 7–15, 21–24, and 30–33 obvious over Cohen, Hao, and Kennewick-II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of persuasion to prove unpatentability, by a preponderance of the evidence, of the claims challenged in the Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4. Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- BurdenNot shown unpatentable
“Based on the record before us, we determine that Petitioner has not established that the combination of Cohen, Hao, and Kennewick-II teaches two limitations required by each of claims 1, 15, and 30. Our analysis below focuses on these two limitations.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Based on the record before us, Petitioner has not persuasively established a rational basis for this combination, nor does Petitioner show a reasonable expectation of success. Petitioner’s underlying premise is that Kennewick-II could “enhance how context is determined” in Cohen and Hao, but as explained above, Cohen and Hao do not disclose any determination of context based on the words “Yes” and “need.” Dr. Smyth testifies that “Hao and Cohen could implement Kennewick’s scoring algorithm to determine the most likely context of the user’s utterance where a word may have multiple possible interpretations.” Ex. 1002 ¶ 104. This logic fails for similar reasons. As noted, the relied-on portion of Hao is not even a spoken utterance. Further, we are not persuaded that the words “Yes” and “need” could have multiple interpretations such that applying Kennewick’s scoring algorithm to Cohen and/or Hao makes sense. We are not persuaded that a person of ordinary skill in the art would have found it obvious to incorporate Kennewick-II to “enhance how context is determined,” as there is nothing to enhance. We agree with Patent Owner that Petitioner never suggests that Cohen and Hao be modified to include context determination in the first instance. See Prelim. Resp. 21. Similarly, Petitioner does not explain persuasively how Kennewick’s scoring algorithm would improve the alleged context determinations based on the single words “Yes” and “need.” Id. Petitioner does not persuade us that Cohen or Hao’s ability to recognize “Yes” and “need” and act upon those words needs context determination. Petitioner has not shown how Kennewick-II would improve the interaction.” slip op. at 21
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,626,703 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 4, 2021 · IPR2020-01381 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Cohen, Hao, and Kennewick-II, with or without Partovi, taught required limitations of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of persuasion to prove unpatentability, by a preponderance of the evidence, of the claims challenged in the Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314(a). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, any objective evidence of non-obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4. Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not identify any claim term that requires construction. Pet. 7–8. Likewise, Patent Owner does not identify any specific term requiring construction to reach a resolution. Prelim. Resp. 3. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Based on the record before us, Petitioner has not persuasively established a rational basis for this combination, nor does Petitioner show a reasonable expectation of success. Petitioner’s underlying premise is that Kennewick-II could “enhance how context is determined” in Cohen and Hao, but as explained above, Cohen and Hao do not disclose any determination of context based on the words “Yes” and “need.” Dr. Smyth testifies that “Hao and Cohen could implement Kennewick’s scoring algorithm to determine the most likely context of the user’s utterance where a word may have multiple possible interpretations.” Ex. 1002 ¶ 112. This logic fails for similar reasons. As noted, the relied-on portion of Hao is not even a spoken utterance. Further, we are not persuaded that the words “Yes” and “need” could have multiple interpretations such that applying Kennewick’s scoring algorithm to Cohen and/or Hao makes sense. We are not persuaded that a person of ordinary skill in the art would have found it obvious to incorporate Kennewick-II to “enhance how context is determined,” as there is nothing to enhance. We agree with Patent Owner that Petitioner never suggests that Cohen and Hao be modified to include context determination in the first instance. See Prelim. Resp. 22. Similarly, Petitioner does not explain persuasively how Kennewick’s scoring algorithm would improve the alleged context determinations based on the single words “Yes” and “need.” Id. Petitioner does not persuade us that Cohen or Hao’s ability to recognize “Yes” and “need” and act upon those words requires context determination. Petitioner has not shown how Kennewick-II would improve the interaction.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,626,703 - Blackberry Corp. v. Facebook, Inc.Rehearing deniedPTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4
- BurdenDecided for patent owner
“construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,356,841 - In-Depth Geophysical, Inc. / In-Depth Compressive Seismic, Inc. v. Conocophillips CompanyRehearing deniedPTAB · Mar 30, 2020 · IPR2019-00849 · APJ Scott A Daniels · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–6 because Petitioner did not show Li was a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030). Although documents indicating a publication date of 1 September 2012 may have relevance, absent additional evidence explaining the origin and meaning of that date as to public accessibility, on the record before us, the date alone fails to show a reasonable likelihood that Li was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. This is especially true in the face of Dr. Aminzadeh’s unrebutted testimony as to SEG’s regular practices surrounding the acceptance and dissemination of SEG conference papers. While his testimony may not speak directly to a date of public accessibility for Li itself, it is relevant, uncontroverted, and probative of accessibility to SEG papers in general, given the bare “1 September 2012” date relied on by Petitioner.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Petitioner to the extent that Dr. Aminzadeh did not attest to personal knowledge of the Li paper. Dr. Aminzadeh however provided a credible explanation of the process for authoring and presenting papers at the SEG (Society of Exploration Geophysicists) conference. Dr. Aminzadeh is a member and co-author of SEG papers, as well as a former President of SEG. Ex. 2007 ¶ 3. In our Decision, we explained that [w]e give weight to Dr. Aminzadeh’s testimony because it articulates a reasonable and unrebutted explanation for the September 2012 date listed by Researchgate exhibit. Dr. Aminzadeh’s testimony also persuasively explains how and why the dissemination and first public availability of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting from November 4-9, 2012. Dec. 12. We also stated in our Decision that dissemination “of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting” (id.) because, for one reason, Dr. Aminzadeh’s unrebutted testimony is that “[a]uthors submit papers to the SEG several months before the SEG conference. The papers are kept confidential by the SEG at that time.” Ex. 2007 ¶ 4. Although Dr. Aminzadeh does not testify specifically to knowledge of the Li reference, Petitioner has not explained persuasively why this indicates that Dr. Aminzadeh’s testimony as to the SEG confidentiality practices and paper dissemination, as set forth in his Declaration, is inaccurate or misleading.” slip op. at 5
§ 102 anticipationPatents in suitUS 9,632,193 - Blackberry Corp. v. Facebook, Inc.Institution deniedPTAB · Mar 5, 2020 · IPR2019-01596 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1 and 3-6 were anticipated by Peinado or obvious over Peinado and McKelvey.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner did not demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. We, therefore, do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“of invention of the ’432 patent “would have had a Bachelors of Science degree in computer or electrical engineering, or equivalent, and 2–3 years of relevant experience working with computer security technology.” Pet. 89. Patent Owner states that “[a] person of ordinary skill in the art . . . would have had approximately the level of education and experience identif[ied] by Petitioner, or a similar level of education and/or experience, with somewhat more education substituting for somewhat less work experience and vice versa.” Prelim. Resp. 4 (citing Storer Decl. ¶ 16). Given the lack of dispute, and for purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, as it is consistent with the level of skill in 5 the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner proposes that the term “dedicated security processor” means “a processor dedicated to providing security functions.” Pet. 910. Patent Owner states that in the copending litigation, the parties have agreed to this construction, and, therefore, Patent Owner does not dispute the proposed construction. Prelim. Resp. 45. For purposes of this decision, we adopt the construction of “dedicated security processor” proposed by Petitioner, as stated above, and agreed to by Patent Owner in the co-pending litigation. The remainder of the claim we interpret in accord with the claim’s ordinary meaning to one skilled in the art at the time of invention, in light of the teachings of the specification and the prosecution history, and do not find it necessary to provide any express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“correctly notes, Peinado’s DRM system and the rendering application are both implemented on a computing device with a single processor. Prelim. Resp. 13. As stated above in the summary of Peinado, security processor 64 runs DRM system 32p in the portable device to authenticate the digital content downloaded from another computer. Ex. 1004, 37:6266. The same DRM system 32p renders the digital content on the portable device. Id. at 36:5362. The claim requires that the “dedicated security processor” validate the file and user access. The claim also requires that the “dedicated security processor” provide the file to “an other processor” that continues processing the file after the user has been validated. There is no “providing” step in Peinado’s security processor 64 embodiment. The same processor performs both the validating and the processing of the file after validation. Petitioner also points to the disclosure of the decrypted content being provided to the rendering application. See Pet. 19. But that “providing” is (1) not shown occur in the embodiment of security processor 64 and (2) not shown to involve “an other processor.” Pointing to another application receiving the content in a completely different embodiment in Peinado is not sufficient to show that Peinado discloses the limitation. Accordingly, we find that the Petition does not show adequately that Peinado anticipates claim 1 of the ’432 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,228,432
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.