• ROKU, Inc. v. Dolby International ABInstitution denied
  PTAB · Apr 3, 2025 · IPR2024-01354 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that claims 1–17 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 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). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’757 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not present an alternative definition. See Prelim. Resp. 10 (“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 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 ’757 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶¶ 19–24), we apply the level of skill set forth above.” slip op. at 10

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

    “Pet. 9. Petitioner also identifies functions and disclosed acts associated with such steps “[t]o the extent the Board determines that the limitations are written in step-plus-function format.” Pet. 9–12. Petitioner argues “whether the terms are step-plus-function is immaterial because the cited art renders the claims obvious under both the step-plus-function constructions and the terms’ plain-and-ordinary meanings.” Pet. 12. Petitioner argues all other claim terms should receive their ordinary and customary meaning. Pet. 12 (citing Ex. 1003 ¶¶ 96–98). Patent Owner responds that “[a]ll claim terms should be construed according to the Phillips standard,” without more. Prelim. Resp. 10–11. We agree with Petitioner that whether the claimed “step” terms are deemed step-plus-function is “immaterial” in deciding whether to institute inter partes review in this case, because the cited asserted art would apply in the same or substantially the same manner either way. Thus, we do not find that the express construction of any term is necessary for this decision.” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner and find that Petitioner does not sufficiently explain why the skilled artisan, given Mahieux, would have had a rational reason to modify Mahieux to keep track of, let alone make use of, perceptibly significant frequency bands. Indeed, Patent Owner’s declarant, Dr. Kyriakakis, persuasively testifies why modifying Mahieux to do so would have made no sense to the skilled artisan: It would not have made sense to modify Mahieux’s system to instead count the number of audible frequency bands (e.g., the number of audible frequency bands B1-B3), as such a count would play no role in Mahieux’s bit allocation. Indeed, as Mahieux’s bit allocation focuses on the number of non-zero coefficients in each individual frequency band in isolation and without regard to the aggregate number of total audible frequency bands of the overall spectrum, generating an aggregate number of total audible frequency bands (e.g., by counting) serves no purpose in Mahieux’s allocation scheme. Further given Mahieux’s focus on allocating bits to frequency coefficients in individual frequency bands in isolation from other bands, [the skilled artisan] would fail to find any use for such an aggregate number or count. Ex. 2002 ¶ 92 (cited at Prelim. Resp. 23). Thus, we find Petitioner does not sufficiently explain why modifying Mahieux to keep track of perceptibly significant frequency bands would have presented itself to the skilled artisan as an option at all, let alone an option that would have been obvious to try. See Rolls-Royce, PLC v. United Tech. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (“[The skilled artisan] must have ‘good reason to pursue the known options within his or her technical grasp.’”).” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,339,757
• Vizio, Inc. v. Multimedia Technologies Pte. Ltd.Institution denied
  PTAB · Nov 22, 2024 · IPR2024-00722 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because it could not determine with reasonable certainty the scope of “a different user interface device” to assess the asserted obviousness grounds.

  RulingsInstitution decision

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

    “an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16

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

    “After considering the determinations in the District Court Order, we agree with the district court that we cannot ascertain with reasonable certainty the scope of the claim term “a different user interface device.” See Ex. 2001, 25 (the district court explaining that “‘user interface device’ in the claim and in view of the intrinsic evidence, as emphasized by counsel’s 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated . reasonable certainty those skilled in the art about the scope of the invention.”). As the district court found, the ’168 patent specification uses the term “user interface device” inconsistently, for example, describing “four different user interface devices” in a navigation bar including the “movies user interface device 2204” in Figure 22A. Id. at 23 (citing Ex. 1001, 45:19–20, 45:27–29). Additionally, the specification appears to describe user interface devices with reference to the rows in Figure 22B, and other parts of the specification also describe selectable interface elements as “user interface device[s].” Ex. 1001, 45:33–37 (cited at Ex. 2001, 23–24), 41:31– 45, 46:67–47:2, 47:18–21, 48:18–20. Still further, the specification appears to describe a menu as a type of user interface device. Id. at 49:3–5 (cited at Ex. 2001, 24), 51:17–19 (same). In addition to these citations from the District Court Order, we note that the term “user interface device” is used when describing a user selecting a specific year from a display of years provided on a user interface: “If user selection 1460 is selected by the user using a user interface device, a new user interface presentation is provided.” Id. at 40:39–46 (emphasis added). On the record before us, we agree with the district court that, based on the ambiguity in the specification, “it is indiscernible what subset of the user interface, if any, is the user interface device.” Ex. 2001, 24. Therefore, we conclude that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability.” slip op. at 13

  • BurdenNot reached

    “an analysis to assess “whether the prior art discloses rendering something other than the second navigation bar” if a second user interface cannot contain that second navigation bar. Prelim. Reply 3–4. But our goal would not be to determine whether the prior art teaches or suggests “rendering something other than the second navigation bar” (Prelim. Reply 3), but rather whether the prior art teaches or suggests “rendering a different user interface device” (Ex. 1001, 55:26–29). In Samsung, the Federal Circuit notes that “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for the purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on keeping with this general direction from our reviewing court, and because no exception curing the impossibility of reaching a determination regarding unpatentability appears in this case, we do not institute an inter partes review. Given our conclusion that we cannot determine the scope of the claim term “a different user interface device” with reasonable certainty for purposes of assessing patentability, we decline to institute inter partes review on the grounds presented.” slip op. at 16

  Claim constructioncites KSR · Graham
  Patents in suitUS 9,232,168
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.

  RulingsInstitution decision

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

    “We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9

  • Expert testimonyPetitioner expert discountedOther

    “Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33

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

    “Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also 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”).” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,997,660
• Teladoc Health, Inc. v. Data Health Partners, Inc.Institution denied
  PTAB · Sep 16, 2024 · IPR2024-00618 · APJ Andreas Baltatzis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the asserted obviousness combinations teach compiling provider data without client input to generate a score.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 7 (citing Ex. 1012 ¶ 36). At this time, Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 2. For the purposes of this Decision, we adopt Petitioner’s formulation for a person of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’812 patent.” slip op. at 7

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

    “We finally consider the disputed limitation “without input from the clients.” Petitioner argues that data inputted by a provider, and not the client, “is without input” from the client. See Pet. 51 (citing Ex. 1012 ¶ 141). Patent Owner distinguishes between entered data and compiled data. See Prelim. Resp. 19–20 (“[T]he element in claim 16 does not require data entry without input from the patients. Instead, . . . claim 16 recites that ‘instructions are executed by the processor to: . . . compile data’”). Patent Owner thus argues that the negative limitation “without” excludes client input from the compiled data to generate a score, not the entered data as a whole. See id. In other words, both providers and clients may input data, but the score is generated from data collected from the providers, not the clients. We agree with Patent Owner’s position—that the compiled data used to generate a score includes client data received from the providers and excludes (is without) input from the clients—as consistent with the plain and ordinary meaning of the claim limitation. This reading gives meaning to the express limitation “without input from the clients.” See Phillips, 415 F.3d at 1314 (“the use of a term within the claim [may provide] a firm basis for construing the term”). We next consider whether this interpretation is consistent with the intrinsic evidence.” slip op. at 9

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 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.”). slip op. at 6

  • BurdenNot shown unpatentable

    “In sum, none of Petitioner’s citations to Douglas appear to address compiling data without input from the client to generate a score. Petitioner’s declarant, Dr. Bergeron, does not provide any further explanation of why one of ordinary skill in the art would compile data without input from the client to generate a score, nor a reason to modify Douglas to do so. See Ex. 1012 ¶¶ 141–142, 90–91. Instead, Dr. Bergeron merely provides the conclusion mirrored in the Petition. See Ex. 1012 ¶ 141. Finally, Petitioner does not rely on Klotsche, Virginia, or Wager for the disputed limitation “without input from the client.” See Pet. 32 (discussing Klotsche), 33 (discussing Virginia), and 58–59 (discussing Wager). Based on the record before us, Petitioner has not established that the asserted art teaches or suggests all of the claim elements and limitations of claim 16. Accordingly, Petitioner has not established a reasonable likelihood of prevailing on its assertion that claim 16, and dependent claim 17, would have been obvious over Douglas, Klotsche, and Virginia or Douglas, Klotsche, Virginia, and Wager.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,061,812
• 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
• Akamai Technologies, Inc. v. Equil IP Holdings LLCInstitution denied
  PTAB · Jul 21, 2023 · IPR2023-00332 · APJ Richard M Lebovitz · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–7 unpatentable: Tso did not disclose the claimed request information, and Samaniego was not prior art.

  RulingsInstitution decision

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

    “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 Preliminary Reply Brief, the Preliminary Sur-reply, and the evidence of record, for the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one claim challenged in the Petition. Hence, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in computer systems, computer science, or the equivalent thereof, and at least two years of experience with networked media delivery or related technologies.” Pet. 10 (citing Ex. 1003 ¶¶ 45–46, 48–49). Patent Owner does not dispute Petitioner’s statement of the level of ordinary skill in the art. Prelim. Resp. 8. Petitioner’s definition of a POSITA is consistent with the level of skill disclosed in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We therefore adopt Petitioner’s definition for the purpose of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Tso discloses predetermined “selection criterion may comprise, for example information contained in . . . a data packet received by transcoding server 34.” Ex. 1004, 6:66–7:2. However, contrary to Dr. Madisetti’s testimony,4 the cited disclosure in Tso does not identify the sender of the packet as the network client 12 nor does Tso state that any of the nine disclosed predetermined selection criteria are contained in a data packet. Dr. Madisetti’s statement is conclusory, omitting any reasoning as to why one of ordinary skill in the art would have concluded that the “content characteristics” are received in a data packet from the network client 12, when such information is not explicitly stated in the portion of Tso 4 “The ‘request packet’ sent by the client carries ‘information’ in both its ‘header’ and ‘data portion[s]’ that includes ‘selection criterion,’ which is used to specify what transcoding should be applied to the content. Tso, 6:64- 8:9.” Ex. 1003 ¶ 66 (emphasis added) (footnote omitted). referenced by Dr. Madisetti. We do not accord weight to conclusory expert testimony. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 n.5, 1360 (Fed. Cir. 2019).” slip op. at 21

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

    “As held in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), only those terms that are “in controversy, and only to the extent necessary to resolve the controversy,” need to be construed. See also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid to inter partes reviews). Here, a construction of “content generation operations” and “transformation operations” is not necessary to resolve the unpatentability issues before us. Consequently, we do not address Petitioner’s proffered claim constructions.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,158,745
• Unified Patents, LLC v. Dolby Laboratories Licensing CorporationInstitution denied
  PTAB · Jun 15, 2023 · IPR2022-01508 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were unpatentable over Kim, H.264, and Segall.

  RulingsInstitution decision

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

    “partes review “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) (2018); 37 C.F.R. § 42.4(a) (2022). After considering the information presented in the record before us, we determine that the reasonable likelihood standard is not met. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Unnamed RPIs were improperly excluded because, “even if [they] were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja, 18. We recognize that, while a patent owner must produce some evidence to place in dispute the issue of whether an unnamed real party in interest renders the petition time-barred, a petitioner bears the burden of persuasion on the issue. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242‒44 (Fed. Cir. 2018) (holding that an “IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest” and outlining the “proper procedure for analyzing” such time-bar issues, namely that “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner” and to put the issue in dispute, “a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest”). Still, here, as in SharkNinja, while the Unnamed RPIs are alleged to be currently members of Petitioner Unified, there is no allegation or evidence that any of those members are barred or estopped from this proceeding. This is a key distinction from AIT, in which a potential real party in interest would have been time barred under § 315(b) because it had been served with an infringement complaint more than one year prior to the filing date. AIT, 897 F.3d at 1360. And although Patent Owner contends that Petitioner’s failure to identify members is an approach taken “to avoid estoppel consequences,” the only estoppel issue that Patent Owner identifies is estoppel that could potentially arise under 35 U.S.C. § 315(e) in the future. RPI would be estopped, and because we deny institution of inter partes review on the merits (see infra § II.D), there is no estoppel triggered under 35 U.S.C. § 315 by our decision. In the present proceeding, there is no allegation that Petitioner’s exclusion of the Unnamed RPIs should result in termination of the proceeding or denial of institution of review for any reason other than for the alleged failure to comply with the Board’s rules requiring the identification of RPIs. Additionally, there is no allegation or evidence that any of the Unnamed RPIs is barred or estopped from this proceeding, or any evidence that Petitioner purposefully omitted any of the Unnamed RPIs to gain some advantage. We therefore decline to address Patent Owner’s argument whether the Unnamed RPIs were improperly excluded. See SharkNinja, 18– 20.” slip op. at 5

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

    “coefficient” as referring to data in the frequency domain and not encompassing spatial data. The ’711 patent describes generation of transform coefficients through performing DCT or DST. Ex. 1001, 4:3–11 (cited at Pet. 29). While a specific definition is not provided in the specification of the ’711 patent, we discern no part of the ’711 patent that indicates that transform coefficients could be something other than, as described, values resulting from such transforms. We note that the Petition is consistent with our conclusion, describing transform coding as applying transform operations to residual data in spatial representation, converting that data into a frequency representation represented in a transform coefficient. Pet. 17–18. Additionally, the testimony of Petitioner’s declarant is that “[t]ransform operations convert pixel values . . . from a ‘spatial representation’ . . . into a ‘frequency representation,’” that “[i]n the frequency domain, each block is represented as a combination of frequency elements,” and that “[a] transform coefficient is used to represent the relative contribution of each of these elements.” Ex. 1002 ¶¶ 35–36. H.264, which Petitioner notes is referenced in the patent, defines, in its definition section, (1) a “transform coefficient” to be “[a] scalar quantity, considered to be in a frequency domain, that is associated with a particular one-dimensional or two-dimensional frequency index in an inverse transform part of the decoding process” and (2) an “inverse transform” as converting transform coefficients into spatial-domain values Ex. 1004, 11 (§ 3.153) (emphases omitted), 7 (§ 3.69); see Ex. “convert[ing] the samples into another domain in which they are represented by transform coefficients”), 87. We do not discern where or how H.264 teaches that array elements cij are considered transform coefficients in all cases, as Petitioner argues. Ex. 1004, 171–173 (§ 8.5.10) (describing elements cij as transform coefficients only in “the following text of the process,” after a determination that inverse transformation has not been bypassed). Lastly, Kim describes “residual coefficients” as inputs to a transform, with a transform coefficient being the resulting output from a transform. See, e.g., Ex. 1003, 14:17–15:9. Thus, on this record, and for purposes of this decision, we conclude that the claim term “transform coefficient,” given its ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, does not refer to spatial data, but rather only to frequency-domain data.” slip op. at 19

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

    “Segall. Prelim. Resp. 19–23. Patent Owner contends that the first flag bit cannot, as Petitioner argues, be a bit that indicates that transform coding has been bypassed (and therefore that an inverse transform need not be performed in order to reconstruct the block). Id. at 20–23. Patent Owner argues that it would make no sense to obtain and dequantize transform coefficients if the transform domain were to be bypassed. Id. at 21 (citing Ex. 2001 ¶¶ 53–55). Patent Owner argues that the recitation that dequantized transform coefficients are obtained in steps 1c and 1d is inconsistent with an interpretation that an inverse transformation is to be bypassed, since these coefficients are in the transform domain and cannot be decoded in the spatial domain. Id. at 22. Patent Owner contends that “a transform bypass flag in place of the ‘first flag bit’—representing an option of processing exclusively in the spatial domain—would provide no meaningful information to the decoder.” Id. (citing Ex. 2001 ¶ 56). Petitioner responds by indicating that the transform coefficients of steps 1c and 1d may be either spatial domain data or frequency domain data, and if the former, it would not require inverse transformation. Pet. Reply 1–3. However, as addressed above, we do not agree with Petitioner’s arguments regarding the plain and ordinary meaning of “transform coefficient.” See supra II.C.2. Instead, we agree with Patent Owner that Petitioner’s combination that incorporates Segall’s flag, indicating the bypassing of the transform domain, would not have been combined with Kim’s decoding process by insertion at a point after transform coefficients have been obtained by entropy-decoding and dequantizing the input flag bit’ is implicated in Claim 1 of the ’711 Patent, the decoder already knows that a transform has in fact not been bypassed and that transform coding has been utilized.” Ex. 2001 ¶ 57. Thus, we find that Petitioner’s obviousness rationale is unsupported by the evidence and arguments presented.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,176,711
• Apple Inc. v. Arigna Technology Ltd.Institution denied
  PTAB · Jun 14, 2023 · IPR2023-00453 · APJ Steven M Amundson · IPR · Institution

  The Board denied institution because Petitioner did not show that Ohi anticipates claims 1 and 2, principally because it did not disclose claim 1’s pulse-generation limitation in the claimed arrangement.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “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). 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).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 325(d) to deny institution because: (1) the Examiner cited Ohi during the ’835 patent’s prosecution; (2) the “same art and arguments were previously presented to the Office”; and (3) the “patentability of the challenged claims was confirmed over that art and those arguments.” See Prelim. Resp. 1, 11–20; 35 U.S.C. § 325(d); Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). Petitioner argues that we should decline to exercise our discretion under § 325(d) to deny institution because “the Examiner erred in a manner material to patentability” by failing to consider a particular embodiment in Ohi that “shows the precise circuit arrangement that the Examiner deemed lacking” from a cited embodiment in Ohi. See Pet. 10–14. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of at least one claim challenged in the Petition. See infra § IV.D.2(a)(iii). Hence, we do not consider discretionary denial under § 325(d).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “corners of a single, prior art document describe every element of the claimed invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006)). The prior-art document “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Id. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Hence, a patent challenger cannot rely on portions from different, unrelated embodiments in a prior-art document to demonstrate anticipation. See id. at 1369, 1371.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For an ordinarily skilled artisan with approximately two years of relevant work experience, Petitioner’s description requires more education (“a graduate degree”) than Patent Owner’s description (“a bachelor’s degree”). See Pet. 14; Prelim. Resp. 8. For an ordinarily skilled artisan with a graduate degree (“a master’s degree or Ph.D.”), Petitioner’s description requires more relevant work experience (“at least two years”) than Patent Owner’s description (no specified amount). See Pet. 14; Prelim. Resp. 8. We adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’835 patent as well as the asserted prior art. For instance, a graduate degree and at least two years of relevant work experience would have allowed someone to understand the ’835 patent and the prior art. See Ex. 1004 ¶ 23. Additionally, someone with a higher skill level will understand the technology at least as well as someone with a lower skill level. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). We note that our analysis would not change if we adopted Patent Owner’s description of an ordinarily skilled artisan.” slip op. at 15

  Claim construction§ 102 anticipationDiscretionary denialcites Phillips
  Patents in suitUS 7,183,835
• Samsung Electronics Co., Ltd. v. Cardware, Inc.Institution denied
  PTAB · Jun 13, 2023 · IPR2023-00219 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Samsung did not show a reasonable likelihood that claims 1–21 and 23–30 were unpatentable, including failure to show the claimed combining and transmitting limitations.

  RulingsInstitution decision

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

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 8

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

    “information and transmitting the combined payment information to an NFC reader, we find that Petitioner has not demonstrated sufficiently that Royyuru teaches or suggests claim limitations 1.h and 1.i. In view of this finding, we need not analyze the remaining limitations of claim 1 for purposes of this Decision.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s proposed description of the level of ordinary skill appears consistent with the subject matter described and claimed in the ’538 patent and the references, we apply Petitioner’s proposed description in this Decision.” slip op. at 7

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

    “whether to institute inter partes review. 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)). Neither party has proposed a special definition or explicit construction of any claim term. Although the parties’ arguments discuss the meanings of certain claim terms, as discussed further herein, for purposes of this Decision, we do not construe any claim terms specifically.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,176,538
• Samsung Electronics Co., Ltd. v. Cardware Inc.Institution denied
  PTAB · Jun 13, 2023 · IPR2023-00210 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 4–17 were unpatentable, principally due to the static-number limitation.

  RulingsInstitution decision

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

    “After considering the parties’ submissions and for the reasons discussed below, we determine that Petitioner’s arguments and evidence for claim elements [1k] and [10e] do not meet the threshold for institution.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “(1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technology.” Pet. 5 (citing Ex. 1003 ¶¶ 39–44). According to Petitioner, “[g]raduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 14. For purposes of this Decision, we apply Petitioner’s definition of a POSITA, which is consistent with the scope and content of the ’520 Patent and the asserted prior art.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “To the extent that Petitioner equates a static number with a dynamic number, we disagree. The ’520 Patent uses the words, “static” and “dynamic,” consistent with their ordinary and customary meanings, where “static” means fixed or unchanging, and “dynamic” means continuously changing. Exs. 3002, 3003 (Merriam-Webster online dictionary). Claims 1 and 10 recite “a static device account number” and a “dynamically generated one-time limited-use number,” and further recite using these two numbers “together in the place of issuer provided payment information for making a payment transaction.” Ex. 1001, 16:18–33, 17:18–33. We find that these recitations are consistent with the ordinary and customary meanings of “static” and “dynamic.” between a “static” number (or number portion) that is “fixed” and a “limited-duration” number (or number portion) that is “dynamically generated.” Ex. 1001, 10:3–7, 10:13–23, 10:33–62. According to the ’520 Patent, “[t]he limited-duration credit card number is able to be limited to only one transaction, a finite number of transactions, or may be limited to a specified period of time—e.g., 2 minutes, 10 minutes, 3 hours—after which time that particular limited-duration number would become invalid.” Id. at 10:18–23. The ’520 Patent discloses an embodiment in which “the number displayed on the credit card device is a static number, but the number transmitted during a transaction is a limited-duration credit card number as described above.” Id. at 10:33–36. The ’520 Patent discloses another embodiment in which a portion of the credit card number is “fixed” or “static” and another portion is “dynamically generated.” Id. at 10:34–46, 10:53–56. The Specification does not support construing “a static device account number” as encompassing a number that is dynamically generated and valid for only a finite number of transactions or a specified period of time, such as two minutes, ten minutes, or three hours. We determine that no further claim construction is necessary for purposes of this Decision.” slip op. at 8

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

    “wirelessly receiving,” however, Petitioner proposes to modify Gomez’s EPIC payment card number. Pet. 18–20. More particularly, Petition contends that, “[t]o the extent Gomez does not expressly disclose that the EPIC number is received wirelessly, such features would have been obvious in view of Carlson’s teachings.” Pet. 18 (citing Ex. 1003 ¶ 171). Petitioner directs us to Carlson’s teaching that the PAI is wirelessly received by a portable wireless device. Id. (citing Ex. 1006 ¶¶ 32, 34, 51, 68, Figs. 2, 5). As a rationale for combining Carlson’s teaching with Gomez, Petitioner contends that “[w]ireless reception of the EPIC number would have enabled the device to more readily obtain new or updated EPIC numbers from timeto-time, such as when the current EPIC number expires or in the event the EPIC account is compromised.” Pet. 18–19 (citing Ex. 1003 ¶ 172). As support for this rationale, Petitioner asserts that “Carlson expressly recognizes security protections that would be realized by updating the PAI from time-to-time—i.e., a capability made possible by configuring the device to receive wirelessly new PAIs.” Pet. 19 (citing Ex. 1006 ¶¶ 36, 44). We find that Petitioner’s obviousness rationale is unsupported by the evidence or in conflict with the claim requirement for a “static device account number.” To the extent that Petitioner proposes that a new or updated EPIC number would be wirelessly received “from time-to-time, such as when the current EPIC number expires or in the event the EPIC account is compromised” (Pet. 19), such a modification is not supported by Carlson, which teaches that the PAI is “transitory,” has a “limited lifetime,” and “may be set to expire after a certain number of transactions or after a certain time period.” Ex. 1006 ¶¶ 36, 44. Moreover, Carlson does not teach or suggest Carlson’s PAI) merely “from time-to-time, such as when the current EPIC number expires or in the event the EPIC account is compromised,” as proposed by Petitioner. Such infrequent updating would provide little or no security improvement over conventional credit card numbers that are updated only when they expire or are compromised. See Ex. 1005, 1:40–48 (discussing security risks associated with conventional credit card numbers that are “fixed and never change”). Petitioner fails to show that updating Gomez’s EPIC number merely “from time-to-time” would provide a security improvement over Gomez, which discloses that fraudulent use of the static payment card identifying number “would not be possible because any attempted transaction would not be approved without an appropriate authentication cryptogram generated uniquely for such transaction.” Id. at 2:19–25; see Prelim. Resp. 27 (“Petitioner also fails to explain why a POSITA would want or need to update the EPIC account number given that it is used in connection with a dynamically generated cryptogram.”). To the extent that Petitioner proposes that a new or updated EPIC number would be wirelessly received with the same frequency as Carlson teaches for the PAI, then we find that such a modified EPIC number would not be a “static device account number,” as claimed. As already discussed, Carlson’s PAI is a dynamically generated, transitory number that is valid for only a finite number of transactions or a specified period of time short enough to avoid unauthorized use. Ex. 1006 ¶¶ 35, 36, 44. If Gomez’s EPIC number were modified to have the same limited lifetime of Carlson’s PAI, then it would not be “static,” as claimed. slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,339,520

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.