• 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
• Google LLC v. Metarail, Inc.Rehearing denied
  PTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing

  The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2

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

    “[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5

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

    “Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7

  Claim construction
  Patents in suitUS 9,633,378
• Digital Global Systems, Inc. v. Deepsig Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00194 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution under § 314(a), finding no reasonable likelihood for the remaining claims except claim 13, whose potential success did not justify instituting trial.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent and at least two years of experience working with radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4

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

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 16. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5

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

    “reasonable likelihood of prevailing in showing that claims 4–6, 12, 14, and 16–22 would have been obvious over Jüschke and Holt. Petitioner may satisfy its burden for claim 13, but, as discussed below, that would not impact our decision to exercise our discretion under § 314(a) to deny institution. See Section II.F.” slip op. at 16

  • Other 314aInstitution denied discretionary otherInstitution denied

    “inter partes review. SAS Inst. v. Iancu, 584 U.S. 357, 366 (2018). Specifically, “[i]f a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, . . . the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide, 64 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Here, thirteen challenged claims remain after Patent Owner’s statutory disclaimer. Petitioner at most demonstrates a reasonable likelihood of prevailing for one dependent claim, which has no claims depending therefrom. See Sections II.C–II.E. Thus, based on the particular facts of this case, we find that instituting trial would not be an efficient use of the Board’s time and resources, and we exercise our discretion to deny institution under § 314(a). See Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,777,540
• Google LLC v. Metarail, Inc.Institution denied
  PTAB · Apr 24, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over either asserted obviousness ground.

  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.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–21 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’342 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that fields are mapped “to one another using normalized variables stored in a normalized variable data database” as required by claim 1.” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a POSITA “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “Neither Petitioner nor Patent Owner present claim construction in the Petition or Preliminary Response. Pet. 9; see generally Prelim. Resp. Nonetheless, Petitioner contends that Patent Owner’s construction of “universal variable map” is too narrow, but does not appear to offer an alternative construction other than to state that a “universal variable map” includes “a database that links variables from different websites to each other.” See Reply 1-2 (emphasis omitted) (“PO’s arguments for why Halevy’s ‘form database’ is not a universal variable map are all premised on improperly narrowing the term’s scope by adding restrictions that are unsupported by the intrinsic record.”). In the Sur-Reply, Patent Owner reiterates that it has not proposed a construction for “universal variable map.” Sur-Reply 1 (“Patent Owner did not present any claim construction arguments regarding that term, nor does that term’s construction have any bearing on the arguments set forth in the POPR for denying the Petition.”). Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. 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 11

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,262,342
• Google LLC v. Metarail, Inc.Institution denied
  PTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.

  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.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’378 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. 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 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,633,378
• Digital Global Systems, Inc. v. Deepsig Inc.Institution denied
  PTAB · Mar 27, 2025 · IPR2025-00049 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with . . . radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4

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

    “B. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 9–10. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “On this record, we agree with Patent Owner. Claim 1 recites “generating a pre-distorted radio signal by processing the transmit radio signal using a nonlinear pre-distortion machine learning model.” Ex. 1001, 14:19–24. This portion of claim 1 requires processing a transmit signal using a machine learning model. Id. Claim 1 also recites “updating the model parameters based on a distance metric computed between the transmit radio signal and a received signal that is obtained from the one or more radio receivers.” Id. at 14:30–35. This portion of claim 1 requires updating model parameters based on a distance metric computed using a received signal obtained from a receiver. Id. Thus, together, these portions of claim 1 require updating parameters for a transmit model based on a distance metric computed using a signal obtained from a receiver.” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 10,581,469
• Samsung Electronics Co., Ltd v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Mar 21, 2025 · IPR2024-01350 · APJ Michael T Cygan · IPR · Institution

  Institution was denied for claims 1–15 because Petitioner did not show the asserted references were prior art; the claims were supported by the ’330 application’s 2005 filing date.

  RulingsInstitution decision

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

    “To prevail on its obviousness challenges, Petitioner must show that the ’848 patent is not entitled to the benefit of the ’330 application. This issue is dispositive because none of the references relied on by Petitioner qualify as prior art if the ’848 patent is entitled to the benefit of the May 26, 2005, filing date of the ’330 application. Pet. 6, 13. We start by explaining why Petitioner bears the burden of persuasion.” slip op. at 9

  • BurdenDecided for patent owner

    “1. The Burden of Persuasion “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). That burden, termed the burden of persuasion, “is the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). That burden never shifts to the patentee. Id. at 1379. In order for an inter partes review to be instituted, “the information presented in the petition filed under section 311 and any response filed under section 313 [must] show[] that there is a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).” slip op. at 9

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

    “d) Analysis Petitioner has not shown a reasonable likelihood that it would prevail in showing that its asserted references, including Steuer 750 which is a publication of the ’330 application, are prior art to the ’848 patent. Petitioner has not shown that the ’330 application fails to provide written description support for claim 1 of the ’848 patent, which recites “video data” samples and representations.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “a chain of priority from the ’330 application to the ’848 patent contain at least the same disclosure as the ’330 application, Petitioner has not shown that the ’848 patent should not be given the benefit of the effective filing date of the ’330 application. The May 26, 2005 filing date of the ’330 application predates the December 1, 2005 publication date of Steuer 750, the August 13, 2013 issue date of Steuer 768, and the December 2, 2010 and May 27, 2010 publication and filing dates of Neumeier.10 Pet. 7; Ex. 1005, code (43); Ex. 1006, code (45); Ex. 1007, codes (43), (60).11 Therefore, Petitioner has not shown by a preponderance of the evidence that any of the asserted claims in the ’848 patent would have been obvious over the asserted combinations of Steuer 750, Steuer 768, and Neumeier.” slip op. at 22

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,719,848
• Google LLC v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Jan 8, 2025 · IPR2024-00955 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–33 unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “1. Legal Standards “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 of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (hereafter cited as “KSR”). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17

  • BurdenDecided for patent owner

    “To be sure, the pixel belief values used in the Luo-250 device are based on color. The Luo-250 device determines pixel probabilities “by assigning to each pixel a belief value as belonging to the subject matter region based on color and texture features.” Id. ¶ 42. However, using probability values or binary 1s and 0s to map the probability or “belief” that a pixel or area of pixels in an image either is, or is not, a subject matter target, is not the same as designating “certain pixels as certain colors” as asserted by Petitioner. Thus, we are not persuaded that the Petition has adequately supported or explained how the Luo-250 device designates “certain pixels as certain colors.” We also are not persuaded the Petition has established that Luo-250 discloses, teaches, or suggests a device or method that “determines the color range exhibited by the pixel data groups” as recited in Limitation 1[b]. Pet. 17–18 (citing Ex. 1005 ¶¶ 34–39). First, as indicated above, we are not persuaded the Petition has established that Luo-250 “designates certain pixels as certain colors,” which is foundational to Petitioner’s argument that the Luo-250 method determines a “color range exhibited by the pixel data groups.” Second, the evidence cited by Petitioner when attempting to map the quoted claim language regarding “color range” to Luo-250, refers to the designation of individual pixels as “either skin-tone or non skin-tone” in a binary belief map, not a range of colors. Id. at 18 (citing Ex. 1005 ¶¶ 35–39). Petitioner’s argument—that “[b]y analyzing the pixels to designate each as ‘either skin-tone or non skin-tone,’ Luo-250’s device determines ‘[r]egions of skin-tone colored pixels’ in the image” (id.)—is not persuasive evidence of “determin[ing] a color range exhibited by the pixel data groups” as recited in Limitation 1[b]. The Petition does not adequately explain how Luo-250 discloses, teaches, suggests, or otherwise renders obvious the determination of color ranges for pixel data groups in an image. We are further persuaded by Patent Owner’s argument and evidence that the Petition has not adequately explained how the Luo-250 device would “determine[] a color range” based on a determination of probability values for each pixel, rather than a range of colors. Prelim. Resp. 26–27 (citing Ex. 1005 ¶¶ 32, 34, 36, and 38). Dr. Papanikolopoulos’s Declaration testimony further supports Patent Owner’s position. Ex. 2001 ¶¶ 78–81. Dr. Papanikolopoulos testifies, in particular, that Mr. Parulski asserts only “that Luo-250 considers the color of individual pixels. He does not assert that Luo-250 anywhere ‘analyzes the image data . . . and determines the color range, as claimed.’” Id. ¶ 80. We agree.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “To be sure, the pixel belief values used in the Luo-250 device are based on color. The Luo-250 device determines pixel probabilities “by assigning to each pixel a belief value as belonging to the subject matter region based on color and texture features.” Id. ¶ 42. However, using probability values or binary 1s and 0s to map the probability or “belief” that a pixel or area of pixels in an image either is, or is not, a subject matter target, is not the same as designating “certain pixels as certain colors” as asserted by Petitioner. Thus, we are not persuaded that the Petition has adequately supported or explained how the Luo-250 device designates “certain pixels as certain colors.” We also are not persuaded the Petition has established that Luo-250 discloses, teaches, or suggests a device or method that “determines the color range exhibited by the pixel data groups” as recited in Limitation 1[b]. Pet. 17–18 (citing Ex. 1005 ¶¶ 34–39). First, as indicated above, we are not persuaded the Petition has established that Luo-250 “designates certain pixels as certain colors,” which is foundational to Petitioner’s argument that the Luo-250 method determines a “color range exhibited by the pixel data groups.” Second, the evidence cited by Petitioner when attempting to map the quoted claim language regarding “color range” to Luo-250, refers to the designation of individual pixels as “either skin-tone or non skin-tone” in a binary belief map, not a range of colors. Id. at 18 (citing Ex. 1005 ¶¶ 35–39). Petitioner’s argument—that “[b]y analyzing the pixels to designate each as ‘either skin-tone or non skin-tone,’ Luo-250’s device determines ‘[r]egions of skin-tone colored pixels’ in the image” (id.)—is not persuasive evidence of “determin[ing] a color range exhibited by the pixel data groups” as recited in Limitation 1[b]. The Petition does not adequately explain how Luo-250 discloses, teaches, suggests, or otherwise renders obvious the determination of color ranges for pixel data groups in an image. We are further persuaded by Patent Owner’s argument and evidence that the Petition has not adequately explained how the Luo-250 device would “determine[] a color range” based on a determination of probability values for each pixel, rather than a range of colors. Prelim. Resp. 26–27 (citing Ex. 1005 ¶¶ 32, 34, 36, and 38). Dr. Papanikolopoulos’s Declaration testimony further supports Patent Owner’s position. Ex. 2001 ¶¶ 78–81. Dr. Papanikolopoulos testifies, in particular, that Mr. Parulski asserts only “that Luo-250 considers the color of individual pixels. He does not assert that Luo-250 anywhere ‘analyzes the image data . . . and determines the color range, as claimed.’” Id. ¶ 80. We agree.” slip op. at 22

  • Skill levelSkill level board ownOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,668,365
• 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
• Databricks, Inc. v. R2 Solutions LLCInstitution denied
  PTAB · Jun 11, 2024 · IPR2024-00659 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Pike, Pike with Chowdhuri, or Pike with Chowdhuri and MacLeod rendered claims 1–46 obvious.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner does not demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’610 patent. Accordingly, we do not institute an inter partes review of claims 1–46 of the ’610 patent.” slip op. at 2

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

    “Petitioner relies on conclusory reasoning grounded in hindsight to assert a POSITA would have found it obvious to include file names to identify the data in each of Pike’s input files “because it would have allowed for locating that data group in Pike’s system and understanding the data in that file.” Id. at 18 (citing Ex. 1005 ¶ 93).13 Petitioner then makes the leap that, by understanding the data in an input file, a MapReduce programmer would have had reason “to identify input files and write ‘application-specific’ map and reduce functions on those files.” Id. at 18–19 (citing Ex. 1002, 10:1–7, 11:28–47, 14:12–27; Ex. 1005 ¶ 93). The difficulty with Petitioner’s position is that neither Pike nor other cited references disclose, teach, suggest, or otherwise provide motivation to write application-specific map and reduce functions that process each input file by identifiable schema or data type, i.e., by “data group” as recited in claim 1. Pike teaches application-specific programming “to process the input data one record at a time” or “to generate its output data in the form of key/value pairs,” nothing more. Ex. 1002, 7:31–36; see Pet. 29 (citing same); Prelim. Resp. 40–41, 50–51, 56 (citing same). Petitioner’s posited file names for Pike’s input files, moreover, could not serve as the claimed “data group” mechanism to identify the data in each input file by schema (or data type) for separate map and reduce processing. Each of Pike’s 13 Linn Declaration paragraph 93 is substantially identical to Petitioner’s argument and does not add any further insight or analysis on this point. data blocks can include data from more than one input file, a portion of one input file, or an entire input file. Ex. 1002, 6:55–7:6; see also Prelim. Resp. 47 (“Pike’s ‘data blocks’ (purported ‘partitions’) can be entire ‘input files,’ parts of ‘input files,’ or parts of multiple ‘input files’”). Therefore, a file name for one input file could not uniquely identify all of the data within a given data block, which could include data from different input files. Id. We agree with Patent Owner’s reasoning and argument on this point as well. In sum, Petitioner fails to show sufficiently that a POSITA would have had reason or motivation to use input file names in Pike as “data group” identifiers, as recited in claim 1 of the ’610 patent. See KSR, 550 U.S. at 418 (obviousness requires “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable

    “We further agree with Patent Owner that Petitioner’s asserted motivation for tracking processed data “derived from a particular [input] file” to improve efficiency “by enabling a data set to be selectively reduced after it is mapped” (Pet. 35–36 (citing Ex. 1005 ¶ 119)), is speculative hindsight-based reasoning. Petitioner’s posited motivation is grounded in benefits residing in the ’610 patent, not in the prior art or knowledge of a POSITA. Prelim. Resp. 48. Petitioner’s evidence—Dr. Linn’s naked opinion that a POSITA “could” have used the identification of processed output file data as “derived from a particular file” to selectively reduce intermediate data (Ex. 1005 ¶ 119)—is unpersuasive for the reasons given above and legally insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 35

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

    “reasonable likelihood of prevailing in its challenge to the patentability of any of claims 1–46 of the ’610 patent. Therefore, we deny institution of inter partes review of the challenged claims. We need not address Patent Owner’s argument for discretionary denial under 35 U.S.C. § 325(d) in view of our decision denying institution on the merits.” slip op. at 50

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,190,610

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.