• Apple Inc. v. Ferid AllaniInstitution denied
  PTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). 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.” 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). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,271,877
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution denied
  PTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.

  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 “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 has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,010,330
• Apple Inc. v. Mullen Industries LLCInstitution denied
  PTAB · Jun 7, 2023 · IPR2023-00098 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood of proving claims 1–35 unpatentable, including the limitation requiring asking the requesting device whether to request access rights.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “3. Conclusion Regarding Claim 1 We determine Petitioner has not shown a reasonable likelihood that it would prevail in its challenge to independent claim 1.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering or a similar degree with one or two years of experience with wireless networks and devices, as well as with GPS or location-related technology/services, as well as familiarity with devices such as cell phones and personal digital assistants (“PDAs”) as well as wireless positioning technologies such as GPS, triangulation, or trilateration. Pet. 7 (citing Ex. 1021 ¶ 43). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any explicit claim constructions. Pet. 8; see generally Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Contrary to Petitioner’s arguments, though, neither Sheha nor Ganesh discloses or suggests asking the requesting device if location access rights are to be requested from the target device. Sheha teaches that “a [requesting] user can initiate a position request” and “[t]he server queries the [target user] for permission on whether the position request can be granted.” Ex. 1041, 5:24–31. Sheha does not teach asking the requesting user if location access rights are to be requested.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,635,540
• Apple Inc. v. Mullen Industries LLCInstitution denied
  PTAB · May 15, 2023 · IPR2023-00117 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 42–72 were unpatentable over either asserted § 103 combination.

  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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering, or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants (‘PDAs’) and wireless positioning technologies such as GPS.” Pet. 9 (citing Ex. 1021 ¶¶ 42–45). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner does not propose any explicit claim constructions, and asserts that “[t]he claim terms of the ’117 Patent are construed under the Phillips standard, considering the plain meaning of the claim terms to a person of ordinary skill in the art, in light of the language of the claims, the specification, and the file history.” Pet. 9. Patent Owner too does not propose any explicit claim constructions. See Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “that “a user can initiate a position request” from a remote server. Pet. 29 (citing Ex. 1041, 5:24–29, 11:55–58, claims 47, 54; Ex. 1021-7 ¶ 131). Petitioner cites the same disclosure, though, to argue “Sheha discloses requesting access rights from a wireless device” for limitation 42.e and 42.f. Pet. 29–30, 32 (citing Ex. 1041, 5:21–32; Ex. 1021-7 ¶¶ 132–136). To be sure, the cited portion of Sheha refers to only a single act performed by the requesting user: “a user can initiate a position request.” Ex. 1041, 5:24–25. We agree with Patent Owner that the cited portion of Sheha does not teach or suggest separate steps of a user requesting a location and the same user requesting location access rights. Petitioner’s reliance on Ganesh does not cure that deficiency. Petitioner and Mr. Williams cite Ganesh for its teachings of a “denial webpage” which presents to the user an option to receive the requested location at a later time. Pet. 30–31 (citing Ex. 1049, 6:33–49, Fig. 6; Ex. 1021–7 ¶ 134 (stating “Ganesh . . . illustrates examples of such conventional functionality of providing an option to request access rights via a display screen”)). Ganesh, however, does not address requesting location access rights; Ganesh describes an access denial web page provided following an unsuccessful attempt to obtain location information that asks whether the user would like to receive the location information at a later time, not prompting the user to request location access rights. Ex. 1049, 6:33–49, Fig. 6. In other words, neither Sheha nor Ganesh teaches or suggests displaying to a user an option to request location access rights, as a separate step from requesting a location of a second wireless device from a server. Thus, based on the evidence of record, we determine the Petitioner has not adequately shown that a person of ordinary skill would have combined Sheha and Ganesh to arrive at the claimed invention without improper hindsight.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,234,117
• Apple, Inc. v. Mullen Industries LLCInstitution denied
  PTAB · May 3, 2023 · IPR2023-00087 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–19 obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we determine Petitioner has failed to demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–19 of the ’218 patent. Accordingly, we do not institute the requested inter partes review.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertions for which it is offered to support, and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). This is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that a “factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”); Arendi S.A.R.L. v. Apply, Inc., 832 F.3d 1355, 1361–62 (Fed. Cir. 2016) (holding that reliance on common sense in an obviousness analysis is “typically invoked to provide a known motivation to combine, not to supply a missing claim limitation”) (emphasis omitted). Although doing so might be permissible when “the limitation in question [is] unusually simple and the technology particularly straightforward” (id. at 1362), Petitioner has not alleged that to be the case here, much less provided support for such an allegation. The Supreme Court has warned against a “temptation to read into the prior art the teachings of the invention in issue,” and instructed “courts to guard against slipping into the use of hindsight.” KSR Int’l., 550 U.S. at 421. Petitioner has not persuasively shown that the prior art teaches a display screen that “includes indicia . . . representative of a first location” and “indicia representative of a second location” as claimed. Petitioner’s arguments and Mr. Williams’ testimony are not sufficiently supported by Sheha or other objective evidence. Petitioner and Mr. Williams “read into the prior art the teachings of the invention in issue” to yield the claimed display screen. Thus, Petitioner’s analysis rests on impermissible hindsight.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “(‘POSITA’) would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants as well as wireless positioning technologies such as GPS or triangulation,” and that “[a]dditional practical experience would substitute for a formal degree.” Pet. 7–8 (citing Ex. 1021 ¶¶ 43–44). “Patent Owner neither disputes nor consents to Petitioner’s definition of a person of ordinary skill in the art” at this preliminary stage. Prelim. Resp. 3 n.1. The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision, with the exception of the open-ended language “at least.”” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We agree with Patent Owner, that the display screen as claimed includes each of the claimed indicia of locations. Claim 1 recites that the display screen “includes indicia . . . representative of a first location” and “indicia representative of a second location.” Turning to the specification, Figure 6 shows first location 661 and second location 662 simultaneously. Further, throughout the prosecution history, the Examiner relied on U.S. Patent No. 6,885,874 B2 issued to Grube April 26, 2005 (“Grube”) to show Pet. 23 n.2. We apply Petitioner’s understanding for the purposes of our Decision. this limitation. Ex. 1015, 106–524. Figure 2 of Grube shows a display screen that “includes indicia . . . representative of a first location” and “indicia representative of a second location” simultaneously. Ex. 3001. The plain meaning of a display screen that “includes indicia . . . representative of a first location” and “indicia representative of a second location,” read in light of the language of the claims, the specification, and the prosecution history, is that the display screen simultaneously includes both indicia representative of the first location and indicia representative of the second location.” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 11,109,218
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner

    “argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 7,970,059
• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 10

  Claim construction§ 112 disclosurecites Graham
  Patents in suitUS 8,139,878
• Atlassian Corp. PLC / Atlassian, Inc. v. Express Mobile, Inc.Institution denied
  PTAB · Mar 4, 2022 · IPR2021-01471 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 23–25 were unpatentable over either Arner or Huang and Shenfield.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized 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). Having considered the Petition and the evidence of record, we conclude there is not a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of at least one claim of the ’755 patent and, therefore, do not institute inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “Petitioner asserts that “while Arner prefers indirect communication for enhanced security, in some implementations this may not be a priority,” that one of skill in the art “may prefer speed instead, which would make direct communication with the web service more preferred,” and that the selection of the architecture “is simply a design choice,” and “both would be straightforward to . . . implement.” Id. (citing Ex. 1003 ¶¶ 205–206). We find this cursory argument insufficient to establish a motivation to make what would amount to a wholesale modification of Arner. The cited portion of Arner is simply a paragraph of the Background section that generally describes how “smart client” applications “combine the best of the desktop applications and web-based applications.” Ex. 1004, 1:44–46. We fail to see how this suggests removing Arner’s server 3000, which is an important component of Arner’s system. See id. at 6:52–60. Moreover, Petitioner offers no evidence to establish that removal of Arner’s server 3000 would actually result in any noticeable increase in speed, much less an increase that might outweigh the loss of security that Arner’s server 3000 provides. In the absence of such evidence, we conclude that, on this record at least, the proposed modification is an impermissible hindsight reconstruction. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (cautioning that “[a] factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentable

    “We do not agree with Petitioner’s reliance on Huang’s paragraph 74, which simply makes note of a problem with prior art systems that Huang sought to improve. We have previously found this passage to teach away from this modification: In this paragraph, Huang is discussing the problem with calling a vendor-specific object directly from an application, and describing a solution of mapping each vendor-specific object to a generic web services object. Huang teaches that with this solution, applications need not contain hard-coded dependencies on vendor specific objects. Huang teaches that this solution allows the designer and the player to be vendor-independent and work with multi9ple web services without the need for vendor-specific code in the designer, player, or internet browser. A person of ordinary skill, upon reading Huang’s teaching that mapping each vendor-specific object to a generic web services object allows the designer and player to be vendor-independent, whereas calling vendor-specific objects without such mapping does not, would be led in a direction divergent from the path of “the device provides . . . [the] input symbolic name to the web service” that was taken by the applicant. IPR2021-01144, Paper 9, at 19–20 (PTAB January 18, 2022) (internal citations omitted; quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We find these three arguments unpersuasive. First, the fact that the claims do not recite a “direct” connection is immaterial because they do recite “transmitting the processed instructions from the device to the web service.” The issue is whether the “instructions” go “from the device to the web service.” Second, even if the instructions from the user device are “functionally the same” as the instructions received by the web service, they nevertheless are not the same “instructions,” and, as noted above, Petitioner has not sought a construction of “instructions” that would encompass different instructions. Finally, Petitioner’s arguments that changing to a “direct connection” would be “readily envision[ed]” by one of skill in the art, “well within” the “skill” or “knowledge” of one of skill in the art, and “straightforward to implement” are, we conclude, insufficient to establish a motivation to modify Huang in the way Petitioner suggests. See KSR, 550 U.S. at 421 (explaining that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”).” slip op. at 25

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,063,755
• SAP America, Inc. v. Express Mobile, Inc.Institution denied
  PTAB · Jan 24, 2022 · IPR2021-01146 · APJ Kristi L R Sawert · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–7, 11–13, 15, 17, 19–21, and 24–27 were obvious over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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). After considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’044 patent. Accordingly, we do not institute an inter partes review of claims 1, 3, 5–7, 11–13, 15, 17, 19–21, and 24–27 of the ’044 patent on the grounds asserted in the Petition.” slip op. at 2

  • BurdenNot shown unpatentable

    “We agree with Patent Owner. As we stated previously, Huang discloses that each vendor-specific object is mapped to the generic web service object by a definition stored in an XML mapping file. Huang discloses that WSObjectMapping 123 converts generic WS Object Model 130 to a vendor-specific adaptor, such as Siebel Web Service Adaptor 134 for interacting with Siebel Web Service 140. Contrary to Petitioner’s contention, Huang does not necessarily provide the claimed “input symbolic name” to the web service. Instead, Huang converts the input symbolic name to a vendor-specific adaptor, and uses the vendor specific adaptor to interact with the web service. Therefore, on this record, we are not persuaded that Petitioner has sufficiently shown for institution that Huang teaches or suggests “the device provides . . . [the] corresponding input symbolic name to the web service” as recited in claim 1.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 20 (citing Ex. 1004 ¶¶ 5–20, 31–34). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. (citing Ex. 1004 ¶¶ 5–20, 31–34). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’044 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that the Board need not construe any claim term “[b]ecause the prior art asserted herein discloses embodiments within the Challenged Claims’ indisputable scope.” Pet. 20. Petitioner lists the constructions of certain claim terms in co-pending district-court litigations, but contends that “the Board need not construe these terms to resolve this controversy, as any reasonable construction reads on the prior art.” Id. at 21–22. Patent Owner does not propose construing any claim terms. See generally Prelim. Resp. Because our determination below is not impacted by Petitioner’s proposed claim constructions, we need not expressly construe any claim term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, 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 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,928,044
• Adobe Inc. v. Express Mobile, Inc.Institution denied
  PTAB · Jan 21, 2022 · IPR2021-01225 · APJ Kristi L R Sawert · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and 27 were obvious over Huang and Shenfield.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “3. Summary For these reasons, we determine that Petitioner fails to sufficiently show for institution that Huang teaches or suggests each of these disputed limitations of claim 1. As noted above, Petitioner does not rely on the teachings of Shenfield for these limitations. Petitioner’s reliance on Shenfield for other claim limitations does not cure the deficiencies with respect to the two disputed claim limitations discussed above. The remaining challenged claims 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and 27 contain or depend from a claim containing limitations similar to those recited in claim 1. Because Petitioner has not shown sufficiently for institution a reasonable likelihood of prevailing with respect to claim 1, we also determine that Petitioner also has not shown sufficiently for institution a reasonable likelihood of prevailing with respect to claims 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and 27. IV. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner would prevail with respect to obviousness of claims 1, 3, 5, 6, 11, 13, 15, 17, 19, 20, 25, and 27 of the ’044 patent. Thus, we do not institute an inter partes review of the challenged claims.” slip op. at 20

  • BurdenNot shown unpatentable

    “We agree with Patent Owner. As we stated previously, Huang discloses that each vendor-specific object is mapped to the generic web service object by a definition stored in an XML mapping file. Huang discloses that WSObjectMapping 123 converts generic WS Object Model 130 to a vendor-specific adaptor, such as Siebel Web Service Adaptor 134 for interacting with Siebel Web Service 140. Contrary to Petitioner’s contention, Huang does not necessarily provide the claimed “input symbolic name” to the web service. Instead, Huang converts the input symbolic name to a vendor-specific adaptor, and uses the vendor specific adaptor to interact with the web service. Therefore, on this record, we are not persuaded that Petitioner has sufficiently shown for institution that Huang teaches or suggests “the device provides . . . [the] corresponding input symbolic name to the web service” as recited in claim 1. IPR2021-00711, Paper 7 (“the 709 Decision”), 15–16 (citations omitted). Although the Petition filed in IPR2021-00711 (“the 711 Petition,” Paper 1) presented an inherency argument, and Petitioner here presents an obviousness argument, we do not find this distinction persuasive, because the reasoning in both Petitions is similar. For example, Petitioner’s expert contends here that “Huang’s system associates the input value to the bound symbolic name, and both are sent to the web service because [an ordinarily skilled artisan] would have understood that raw data without any identifying information could not be used by a web service because the web service would be unable to identify to what attribute the value relates.” Ex. 1002 ¶ 226; see also Pet. 68–69. This is substantially the same as the argument made in the 711 Petition—i.e., that “without the input symbolic name, Huang’s binding-based technique . . . would not be able to resolve which web service object to modify in response to the user’s request.” 711 Petition, 70. In this case, as in the 711 Petition, Petitioner does not address Huang’s disclosure of an intermediate server that converts a generic WS Object Model to a vendor-specific adaptor, then uses the vendor-specific adaptor to interact with the web service. On this record, we find that the web service, which receives a vendor-specific adaptor from the intermediate server, already knows to what attribute the value corresponds, without being modified in the manner proposed by Petitioner. See Ex. 2003 ¶¶ 46–47. Thus, a person of ordinary skill would not have had motivation to modify Huang so that “the device provides . . . [the] input symbolic name to the web service” as claimed.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundDecided for patent owner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). What the prior art teaches and whether it teaches toward or away from the claimed invention are determinations of fact. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Paragraph 74 of Huang, in its entirety, discloses: One approach to invoking the web service object would be to call vendor-specific objects directly from applications. That approach requires the application to know details about each vendor specific object, and ties the application to a particular web services vendor. Therefore a generic web services object is introduced. Each vendor-specific object is mapped to the generic web services object by a definition stored in an XML mapping file. Applications interact with the generic web services object and need not contain hard-coded dependencies on vendor specific objects. Ex. 1005 ¶ 74. In this paragraph, Huang is discussing the problem with calling a vendor-specific object directly from an application, and describing a solution of mapping each vendor-specific object to a generic web services object. Id. Huang teaches that with this solution, applications need not contain hard-coded dependencies on vendor specific objects. Id. Huang teaches that this solution allows the designer and the player to be vendor-independent and work with multiple web services without the need for vendor-specific code in the designer, player, or internet browser. Id. ¶ 57. A person of ordinary skill, upon reading Huang’s teaching that mapping each vendor-specific object to a generic web services object allows the designer and player to be vendor-independent, whereas calling vendor-specific objects without such mapping does not, would be led in a direction divergent from the path of “the device provides . . . [the] input symbolic name to the web service” that was taken by the applicant. Fulton, 391 F.3d at 1201. slip op. at 18

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,928,044

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.