- PTAB · Mar 4, 2025 · IPR2024-01180 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were unpatentable, chiefly because Rao did not teach blocking network access.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will 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 adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have (1) held at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) had three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 4 (citing Ex. 1003 ¶¶ 24–26). Petitioner further argues that “[m]ore related education would compensate for fewer years of work experience (and vice versa).” Id. (citing Ex. 1003 at ¶¶ 24–26). Patent Owner “does not challenge the Petition’s proposed definition.” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is not disputed and consistent with the invention claimed in the ’076 patent.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that the term “disallow[]” should be given the same construction the parties agreed upon during the district court proceeding. Prelim. Resp. 9. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Petitioner does not sufficiently explain where Rao teaches “allow[ing] or disallow[ing]” as recited in claim 1. See Pet. 13–18, 25–30. To the extent Petitioner and Dr. Bims cite to Rao, they reference paragraphs 191 through 193, which discuss how Rao’s filter 322 is used to implement prioritization. See Pet. 15; Ex. 1003 ¶ 65. More specifically, those paragraphs recite using prioritization to place the network packets in different queues based on their priority. See Ex. 1005 ¶¶ 191–193. We see nothing in Rao that teaches or suggest that the network packets would be disallowed, as opposed to simply delayed, based on priority. Id. And, as Patent Owner argues, this finding is consistent with factual findings made by a different panel considering the teachings of Rao in an inter partes review of a related patent. See Prelim. Resp. 16–18 (citing Samsung Elecs. Co v. Headwater Research LLC, IPR2023-01361, Paper 8 (PTAB Mar. 29, 2024) (Decision Denying Institution)). Even if one reads the Petition as arguing that a person having ordinary skill would have modified Rao to include Araujo’s blocking—which we do not—we would not be sufficiently persuaded by that argument. Although Petitioner explains why a person having ordinary skill in the art would want to consider power usage along with whether the application is in the foreground or background, Petitioner does not explain why a person having ordinary skill in the art would have changed prioritization to blocking. See Pet. 13–18. Indeed, such a modification appears to be one that would render Rao “inoperable for its intended purpose.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,198,076 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Feb 5, 2025 · IPR2024-00920 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–24, 26, 29–33, 35, or 38 were unpatentable over the asserted Koga-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that Petitioner has not established a reasonable likelihood that it will prevail in proving the unpatentability of at least one challenged claim of the ’991 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. at 25–26 (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based on the ordinary meaning of the phrases, “spatial samples” and “spatial information” must refer to different information. Because the “spatial samples [are] decoded into spatial information,” the decoded “spatial information” must be different than the coded “spatial samples.” If “spatial information” were the same as “spatial samples,” then there would be nothing to decode. That construction is consistent with the claim construction rule that different terms are presumed to have different meanings. See MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings . . . .”)). Here, we see no evidence that the claim phrases have the same meaning. To the contrary, the ’991 patent uses the term spatial samples to refer to the image’s pixel values. See, e.g., Ex. 1001, 2:65–67 (“the prediction error signal for a single image block is constructed using both transform basis functions and spatial samples (i.e., pixel values)”) (emphasis added); id. at 4:21–26 (same). The spatial information, however, refers to the result of decoding. See, e.g., id. at 3:29–30 (“the plurality of spatial samples are decoded into decoded spatial information”) (emphasis added); id. at 6:53–55 (“the decoded spatial information and reconstructed prediction of the image block are added together to form the decoded representation of the image block”) (emphasis added); id., Fig. 5, 520 (showing “Decoded Spatial Info”). This is consistent with the claim’s plain language. See id. at 10:1–2 (claim 22 reciting “decoding, by a processor, the plurality of spatial samples into decoded spatial information”) (emphasis added). Accordingly, “spatial samples” and “spatial information” do not refer to the same thing.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument. Petitioner maps both spatial samples and spatial information to the residual of the prediction error. Compare Pet. 37 (referring to spatial samples as the residual of the prediction error), with id. at 44 (referring to spatial information as the residual of the prediction error). However, because spatial samples and spatial information cannot refer to the same thing, they cannot both be the residual of the prediction error. See Section II.C.1 supra. Accordingly, Petitioner has not sufficiently shown that claim 22, along with dependent claims 23, 24, 26, and 30 would have been obvious over Koga. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”); Pet. 47–63 (relying on the analysis of claim 22 for the spatial samples and spatial information limitations). With regard to independent claim 31, along with dependent claims 32, 33, and 35, Petitioner relies on the same arguments discussed above for limitation 22a and 22c to show that Koga teaches commensurate limitations 31c and 31d. See Pet. 54 (“As explained above, Koga teaches the shared substantive limitations of [22a]–[22d] (supra §§VI.A.1) that correspond to limitations [31b]–[31e].”). Accordingly, for the same reasons discussed above for claim 22, we are not sufficiently persuaded by Petitioner’s arguments that independent claim 31, along with dependent claims 32, 33, and 35 would have been obvious in view of Koga.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 16, 2024 · IPR2024-00945 · APJ Stephen E Belisle · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–24 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Prelim. Resp. 22; Ex. 2001 ¶ 67. Patent Owner argues Petitioner relies on Freund to “cure this deficiency,” but the “Petition fails to explain why [the skilled artisan] seeking to implement a Rao-based system would look to Freund’s teachings of foreground/background classifications designed to limit an employee’s ‘counterproductive Web browsing.’” Prelim. Resp. 22. According to Patent Owner and its expert, Mr. de la Iglesia, the skilled artisan “would not have been motivated to do so, because directly contrary to Rao which suggests prioritizing foreground activity over background activity, the relevant teachings of Freund restrict foreground activity relative to background activity.” Id. (citing Ex. 2001 ¶¶ 67–79); see Ex. 2001 ¶¶ 69 (“Rao favors foreground activity, and Freund favors background activity”), 70 (“In contrast [to Rao], Freund teaches the opposite—that foreground activity should be disfavored relative to background activity.”); Prelim. Resp. 23–25. Patent Owner argues the “Petition does not explain why [the skilled artisan] would have been motivated to combine these two references’ treatment of foreground/background classifications, given their opposing treatment of foreground and background activity.” Id. at 25; see id. at 25–28 (Patent Owner explaining why “none of the Petition’s motivations would have justified combining Rao’s and Freund’s contradictory teachings regarding treatment of foreground activity.” (citing Ex. 2001 ¶¶ 74–79)). In short, according to Patent Owner’s expert’s persuasive testimony, “if [the skilled artisan] were looking for ways to supplement Rao’s treatment of foreground activity, they would not have looked to teachings that explicitly disfavor foreground activities, contrary to Rao’s teachings.” Ex. 2001 ¶ 79 (cited at Prelim. Resp. 28).” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 5–6 (“For purposes of this Preliminary Response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’613 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 61), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 3 (“No terms require construction to resolve this Petition.”); Prelim. Resp. 6 (“Patent Owner agrees that no formal claim construction is necessary.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,215,613 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24
- BurdenNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of [the] prior art to arrive at the claimed invention.”).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution deniedPTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Uv Engineering Solutions LLC v. Trojan Technologies Group UlcInstitution deniedPTAB · Dec 11, 2023 · IPR2023-01015 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–24 were unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The primary dispute between the parties is whether the person having ordinary skill in the art works with lamps generally (Petitioner) or works with ultraviolet lamps for fluid treatment systems (Patent Owner). Although the specification of the ’654 patent focuses on ultraviolet lamps for fluid treatment systems (see Ex. 1001, 1:24–2:29), the claims of the patent are not so limited. Rather, the claims broadly claim “lamps” without reciting any field of use. See id. at 6:2–8:24. Because the claims are not limited to ultraviolet lamps or fluid treatment centers, Petitioner’s formulation of the level of skill is more consistent with the claims. Accordingly, we adopt Petitioner’s proposed description of the person having ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because construction of the disputed claim limitation is not necessary to resolve the controversy, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner argues that a person having ordinary skill in the art would have “modif[ied] the terminal pins 126, 128, 130, and 132 of Ellner to be angled relative to the longitudinal axis as shown in Titchener so as to create a reliable connection between cables as disclosed in Titchener.” Pet. 12. Petitioner further argues that “[s]uch a modification would be a simple substitution of one known element (i.e., angled connectors 5a and 5b of Titchener) for another (i.e., non-angled terminal pins 126, 128, 130, and 132 of Ellner) to obtain predictable results.” Id. at 12–13. According to Petitioner, the combination of the teachings of Ellner and Titchener result in a lamp in which “each of the first elongate electrical connector (i.e., terminal pin 126, 128 modified to be angled as shown in Titchener) and the second elongate connector (i.e., terminal pin 130, 132 modified to be angled as shown in Titchener) configured to form an oblique angle with respect to the longitudinal axis.” Id. at 13.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,167,654 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - Samsung Electronics Co., Ltd. v. G+ Communications, LLCInstitution deniedPTAB · Oct 13, 2023 · IPR2023-00665 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 9 was anticipated by Malladi or that claims 1–6 and 9–14 were obvious over Malladi-based combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In order to reach item 846, the UE must first perform step 820, which says “Decode the PDCCH for possible assignment.” Ex. 1005, Fig. 8. In order to decode a PDCCH, the PDCCH must first be detected. Additionally, the [0, 0] code which is sent in step 846 of Malladi Figure 8 also shows that the PDCCH was detected but improperly decoded. Malladi Figure 6 “shows four formats for fixed-size CQI and ACK information.” Ex. 1005 ¶ 16. In each of those formats, [0, 0] means “Missed PDCCH.” Ex. 1005, Fig. 6. Malladi further explains, in a detected, but incorrectly decoded such that the control information is missed: “[T]he UE incorrectly decodes the PDCCH and misses the control information.” Ex. 1005 ¶ 61 (emphasis added). In summary, the portions of Malladi describe a situation where a PDCCH was detected but incorrectly decoded, leading to a situation where the control information was missed/not received by the UE. In other words, Petitioner has not sufficiently shown, based on the current record, that Malladi discloses “when the user equipment fails to detect the physical downlink control channel corresponding to the transmitted data in the sub-frame which transmits the data” as recited in claim 9. Accordingly, Petitioner has not shown a reasonable likelihood of” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Ex. 1001, 4:18–31 (highlighting added). The yellow highlighted language above describes a situation in which the UE “fails to detect.” The paragraph goes on with the disjunctive “or” (red) followed by a second situation where the UE “fails to receive the data” (light blue). See Ex. 1001, 4:18–31. The use of the disjunctive “or” implies that the failing to detect is different than failing to receive. Indeed, if the ’881 patent considered the fails to receive the same as fails to detect, there would be no need to list both items. However, the language recited in claim 9 only recites “fails to detect,” thus indicating that fails to receive is not encompassed by the claim. Thus the issue is whether Malladi discloses a UE that fails to detect or fails to receive. Based on the current record, Petitioner has not sufficiently shown that Malladi discloses a UE that fails to detect as recited in claim 9.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Claim 1, like claim 9, recites substantially the same limitation discussed in the preceding section. Compare limitations [9.pre-1] and [9.c] (Ex. 1001, 12:55–58 and 13:18–20) with limitation [1.e] (Ex. 1001, 11:44– 47). Petitioner argues that “[t]he Malladi-TDTech combination discloses claim element[] . . . 1.e for substantially the same reasons Malladi discloses claim element[] . . . 9.c, . . . which recite the same or substantially the same features.” Pet. 53 (omission relate to other claim limitations). Petitioner further argues that the difference between Malladi and the Malladi-TDTech combination are “immaterial” for this limitation. Pet. 54. Stated differently, Petitioner does not argue that TDTech cures the deficiency associated with limitation [1.e]. deficiency associated with limitation [9.c]. Pet. 57. Nor does Petitioner argue that any of the other references it relies on relate to limitation [1.e] or [9.c]. See Pet. 58–71. Accordingly, for the reasons discussed in the previous section, Petitioner has not shown a reasonable likelihood of showing that the subject matter of claims 1–6 and 9–14 would have been unpatentable based on Malladi and TDTech, either alone or in combination with additional references. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had at least an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Petitioner further argues that “[m]ore education can supplement practical experience and vice versa.” Pet. 4 (citing Ex. 1002 ¶¶ 24–25). Patent Owner argues that “[b]ecause the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 15. and undisputed by Patent Owner, we adopt Petitioner’s proposed formulation and apply it in our obviousness evaluations below.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,184,881 - Ademco Inc. v. Ecofactor, Inc.Institution deniedPTAB · Jul 21, 2023 · IPR2023-00409 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“under the statutory ground advanced. 37 C.F.R. § 42.104(b)(4). Thus, the Petition must identify how “the claimed invention [of each challenged claim] as a whole would have been obvious . . . to a person having ordinary skill in the art” in view of Leen, Trundle, and Ehlers. 35 U.S.C. § 103. The Petition does not do this. In particular, and as Patent Owner argues and as we explain below, the Petition fails to show what it maps to the recited “thermostat system”/“thermostat” includes, or would have been modified to include, a processor configured to “receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature value based on the geo-positioning data,” as recited in claim 1. Prelim. Resp. 11–19.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person having ordinary skill in the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with (i) process control, (ii) automation systems, (iii) or a comparable field of work.” Pet. 8 (citing Ex. 1002 ¶12). Patent Owner does not dispute Petitioner’s definition. Prelim. Resp. 7–8. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’890 patent and the asserted prior art and is not challenged by Patent Owner, we apply it in our analysis below.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“(Ex. 1021 at 2) in a related civil action, but neither party offers an express construction of the preamble. Pet. 3; Prelim. Resp. 8. In fact, both parties state that Petitioner’s grounds of unpatentability do not turn on whether the preamble is limiting. Pet. 3; Prelim. Resp. 8. We do not explicitly construe any limitations, as it unnecessary to decide the Petition. However, we agree with the court and the parties that the preamble of claim 1 is limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). This is the case here as the body of claim 1 twice refers to “the thermostat” for which the only antecedent basis could be “A thermostat system.” Ex. 1001, at claim 1.” slip op. at 7
- BurdenDecided for patent owner
“E. Analysis of Ground I (Petition Ground “1A”) A Petition must “identify” how a challenged claim is unpatentable under the statutory ground advanced. 37 C.F.R. § 42.104(b)(4). Thus, the Petition must identify how “the claimed invention [of each challenged claim] as a whole would have been obvious . . . to a person having ordinary skill in the art” in view of Leen, Trundle, and Ehlers. 35 U.S.C. § 103. The Petition does not do this. In particular, and as Patent Owner argues and as we explain below, the Petition fails to show what it maps to the recited “thermostat system”/“thermostat” includes, or would have been modified to include, a processor configured to “receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature value based on the geo-positioning data,” as recited in claim 1. Prelim. Resp. 11–19.” slip op. at 11
Claim constructioncites GrahamPatents in suitUS 10,584,890
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.