- Caption Health, Inc v. University Of British ColumbiaInstitution deniedPTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 . . . 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.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,129,591 - Orca Security Ltd. v. Wiz, Inc.Institution deniedPTAB · Dec 15, 2025 · IPR2025-01083 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Shivamoggi disclosed the required natural-language list of abnormal connections, including for the dependent-claim grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’554 patent. We do not institute inter partes review as to the challenged claims of the ’554 patent.” 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 an academic area emphasizing computer science (i.e. computer science, computer information systems, computer engineering, etc.) or cybersecurity, with at least two years of experience in the field of cybersecurity.” Pet. 6 (citing Ex. 1003 ¶ 49). Petitioner further argues that “additional education or experience might substitute for these requirements.” Id. Patent Owner does not contest Petitioner’s proposed definition of a POSITA at this stage of the proceeding. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’554 patent and the cited prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim terms need to be construed to resolve any issues in controversy in the Petition.” Pet. 7 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that “[n]o constructions are necessary to deny institution because denial is warranted for numerous reasons that do not depend on claim construction, as further detailed below.” Prelim. Resp. 2. We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties.” slip op. at 8
- BurdenNot shown unpatentable
“Having reviewed the record presently before us, we agree with Patent Owner. Limitation 1[d] requires generating “insights, wherein the generated insights include at least a list of abnormal connections between the identified network objects.” The ʼ554 patent states that “[n]etwork insights are natural-language representations of aspects of the network graph.” 1 Ex. 1001, 10:15–17. Petitioner acknowledges that the recited “insights” are “natural-language representations.” Pet. 26 (citing Ex. 1001, 10:16–18). Dr. Easttom also agrees that insights are natural-language representations. Ex. 1003 ¶ 100 (testifying that “Shivamoggi’s insights are provided to the user as textual descriptions (i.e. natural-language representations).”). As an 1 The parties do not address whether the “wherein” clause of limitation 1[d] runs afoul of the printed matter doctrine. “[T]he petition must set forth . . . . [h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104. Even though “insights” are described in the ʼ554 patent as “natural-language representations of aspects of the network graph” (Ex. 1001, 10:15–17), Petitioner does not construe “insights, wherein the generated insights include at least a list of abnormal connections between the identified network objects,” as “printed matter” that may be disregarded because it is “not functionally related to the substrate.” See Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) (“‘Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.’. . . For example, in In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) there was no functional relationship between claimed instructions and a diagnostic kit, as the instructions ‘in no way depend[ed] on the kit, and the kit [did] not depend on the’ instructions.” (quoting Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). Because the parties have not addressed it, we decline to consider if the printed matter doctrine applies here. “virtual machine one to load balancer five, where port eighty is routed to port 1337 on virtual machine one, then from load balancer five to firewall two, where port eighty of firewall two is open, then from firewall two to subnet sixteen, where subnet sixteen has a network address of 10.0.1.0/24, then from subnet sixteen virtual network ten, where virtual network ten has a network address of 10.0.0.0/16, then from virtual network ten to virtual network eleven, via peering connection twelve, where peering connection twelve includes a routing rule to virtual network twelve, specifying virtual network twelve's network address, where virtual network twelve's network address is 172.31.0.0/16.” Ex. 1001, 10:31–45 (quotation marks in original). This example illustrates that an insight is provided in natural-language, or textual, format, consistent with the description of an insight in the ʼ554 patent and the testimony of Dr. Easttom. The limitation, which recites “the generated insights include at least a list of abnormal connections,” therefore requires generating a naturallanguage representation of a list of abnormal connections.” slip op. at 18
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 11,722,554 - PTAB · Nov 21, 2025 · IPR2025-01055 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 were unpatentable as obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). 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 based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any one 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 ’326 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’326 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, which is supported with testimony of Dr. Easttom (Ex. 1004 ¶ 22–23), we apply the level of skill set forth above.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim 1 explicitly recites “partially,” not “fully” or “completely.” On its face, “partially” appears to have its plain and ordinary meaning, i.e., not completely. The use of “partially” in the subject limitation shows or at least strongly suggests that the claimed invention contemplates at least some frequency gap to remain between the first channel and the second channel. In addition, as argued persuasively by Patent Owner, this interpretation is further supported by claim 1’s requirement of “transmitting data subcarriers occupying the first channel, the second channel, and the frequency gap in parallel to a receiver”: [T]he “transmitting” step in claim 1 requires that the frequency gap be included in the transmitted signal. Inclusion of the frequency gap in the transmitted signal necessarily requires that the frequency gap be only partially filled -- but not fully filled -- with added data subcarriers at the time of transmission, because if the frequency gap were fully filled it would no longer exist at the time of signal transmission. Prelim. Resp. 23. Petitioner offers no explanation for how the language of claim 1 itself would allow for “partially” to encompass “completely.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For all but one sentence of Petitioner’s arguments for how each of the subject combinations allegedly would have taught the Partially Filling Limitation as variously recited in claims 1, 16, and 18, Petitioner relies (implicitly) on a construction of “partially” that allows for completely filling the frequency gap between the first channel and the second channel, and alleges that the asserted combinations teach completely filling such gap. See Pet. 26–28 (Gardner and Mori), 64–67 (Mori, Lu, and Williams); Prelim. Resp. 25–29, 38–40 (Patent Owner agreeing that the asserted combinations teach only completely or fully filling the frequency gap.). We reject such a construction of “partially” as discussed above in Section III.C.2, and thus find Petitioner’s arguments unpersuasive.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,027,326 - PTAB · Nov 18, 2025 · IPR2025-00782 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
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 . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’469 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: [A] POSITA would have had at least a bachelor’s degree in computer science, computer engineering, business information systems, software engineering, or systems engineering and at least two years of experience in computer networking or telecommunications. Ex.1002 ¶21; see also Ex.1001 (1:14-31). Additional education could substitute for professional experience. Ex.1002 ¶21. Significant work experience could substitute for formal education. Ex.1002 ¶21. Pet. 7–8. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “do[es] not believe explicit construction is required to resolve this Petition.” Pet. 7. Patent Owner proposes constructions for “Internet,” “access the Internet,” “subscriber access website.” Prelim. Resp. 12–15. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. Alleged Anticipation of Claims 1, 2, 10, 11, and 24–28 by Bruner and” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We find Patent Owner’s argument to be persuasive. Petitioner does not explain adequately how Bruner discloses the positional requirement of a subscriber access unit being coupled between the satellite dish and the router. Accordingly, Petitioner has not shown sufficiently for purposes of institution that Bruner anticipates independent claim 24. Although, for the obviousness challenge, Petitioner contends that Clark discloses a wireless router (for limitation 24c), Petitioner relies solely on Bruner for the “between” limitation. See Pet. 17 (“Bruner and/or Bruner in view of Clark both disclose each limitation of claim 24c, including a router (e.g., Bruner’s ‘ADS’ and Clark’s ‘wireless router’)”); id. at 18–19 (the discussion of the “between” limitation 24d asserting that “Bruner discloses claim 24d,” with no mention of Clark). Furthermore, Petitioner merely asserts that both Bruner and Clark disclose a router. See id. at 17–18. Petitioner, however, does not indicate clearly which is used in the proposed combination, does not describe the configuration of a proposed combination or a proposed modification of Bruner’s system, and fails to set forth an adequate and persuasive reason with rational underpinning as to why a person of ordinary skill in the art would have modified Bruner’s system to arrive at the positional requirement of the subscription access unit being coupled between the satellite dish and a router. See id. at 13–14 (motivation section for this ground); id. at 18–19 (addressing the “between” limitation 24d). Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its challenge to independent claim 24 as obvious over Bruner in view of Clark.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,324,469 - PTAB · Nov 5, 2025 · IPR2025-00786 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over either asserted combination.
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 . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’785 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) relevant to this patent at the time of its invention would’ve had a bachelor’s degree in computer science, computer engineering, or a related technical field, combined with approximately two years of practical experience in fields of networking such as network virtualization, security, or management. Additional professional experience might substitute for less education and vice versa. Pet. 10–11 (citing Ex. 1011 ¶¶ 33–35). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. However, Patent Owner’s proffered declarant, Dr. Noubir, opines that “a person of ordinary skill in the art in March 2003 would have a bachelor’s degree in computer science or electrical engineering, and would have one or two years of experience in computer networking or equivalent educational and professional experience.” Ex. 2008 ¶ 53. We discern no material difference between the two definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to apply Patent Owner’s witness’s assessment, the outcome of this Decision would be the same.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“name.” See Pet. 11–16 (claim construction section). Patent Owner asserts that “a person of ordinary skill would read ‘a domain name’ in its ordinary networking sense: an ASCII string label used with the Domain Name System (DNS) to resolve to an IP address.” Prelim. Resp. 16 (citing Ex. 1001, 1:47–48; Ex. 2008 ¶ 37). This is consistent with the Specification, which explains: Users and software applications do not always refer to hosts or other resources by their numerical IP address. Instead of using numbers, they use ASCII strings called domain names. The Internet uses a Domain Name System (DNS) to convert a domain name to an IP address. Ex. 1001, 1:45–50. According to the Patent Owner, the network in the Specification of the ’785 patent is defined by the domain name X.VCN. Id. at 33 (citing Ex. 1001, 9:18–19, 9:28–31). Patent Owner further contends that “[t]he use of a domain name to define the virtual network in the ‘785 Patent’s claims provides more than an identifier of the virtual network or even a plain language identification of an IP address – it signifies a hierarchical structure for the virtual network that enables [certain functions].” Prelim. Resp. 33–34 (citing Ex. 2008 ¶¶ 83–84; Ex. 1001, 14:29–38).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We agree with Patent Owner, however, that Petitioner has not explained adequately why a person of ordinary skill in the art would have further modified the Caronni-I/Caronni-II combination to have DNS capability or why a person of ordinary skill in the art would have combined the three references to have a system that returned the three specific addresses recited in the challenged independent claims. Rather than explaining the “why,” the Petition’s motivation argument focuses on the purported capabilities of the resulting combination and implying, but not explicitly stating, that the combination results in the claimed subject matter; this indicates impermissible hindsight. See, e.g., id. at 29 (“This integration would leverage Hipp’s DNS capability for virtual hostnames to return multiple address records from a single query, aligning with the dual addressing requirements of hybrid virtual/physical networks. The combination creates a cohesive system where DNS resolution triggers context-aware routing decisions—using virtual addresses for internal Supernet traffic and NAT-translated addresses for cross-boundary communication.”). We determine that Petitioner has failed to set forth an adequate and persuasive reason with rational underpinning as to why a person of ordinary skill in the art would have combined the three references’ teachings to arrive at the claimed subject matter where the three recited addresses are returned in response to a DNS request.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,949,785 - Apple Inc. v. Ferid AllaniInstitution deniedPTAB · 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 obviousnessPatents in suitUS 8,271,877 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00814 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim over the asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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. 35 U.S.C. § 103(a); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on 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) any objective indicia of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness determination requires finding a reason to combine accompanied by a reasonable expectation of achieving what is claimed in the challenged patent. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 419–20.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“tripping” as “any motion of a tooth in any direction other than directly toward the desired final position.” Ex. 1004, 4:12–13. Chishti-511 teaches minimizing round-tripping (“teeth are moved in the quickest fashion with the least amount of round-tripping”), but acknowledges that “[r]ound-tripping is sometimes necessary to allow teeth to move past each other.” Id. at 4:9–15. In an attempt to counter Patent Owner’s teaching away arguments, Petitioner relies heavily on Chishti-511’s statement that “[r]ound[-]tripping is sometimes necessary.” See Pet. 29–30; see also Ex. 1003 ¶ 83 (Dr. Yadav relying on Chishti-511). This reliance is unavailing, because as noted above, Chishti-511 defines “round-tripping” more broadly than is claimed here. Indeed, in the ’444 IPR, the Board stated that “the ‘round tripping’ described in Chishti ’511 is something different than the ‘round tripping’ required by the ’444 patent.”10 Ex. 1008, 16. Despite being aware of this prior finding 10 In the ’444 IPR, the Board employed the same construction of “round-tripping” that we use here. Compare Ex. 1008, 6, with Section II.C supra. (see Pet. 6), Petitioner here fails to address the difference between Chishti- 511’s round-tripping and the claimed round-tripping. That is, Petitioner places great weight on Chishti-511’s statement that “round-tripping is sometimes necessary,” but has not established that Chishti-511 contemplates round-tripping as claimed, as opposed to some other, different movement pattern encompassed by Chishti-511’s broader statement about round-tripping.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“discussion of “need[ing] collision-free treatment paths,” skilled artisans would have turned to Becker. Pet. 23–24 (citing Ex. 1004, 4:15–22). But on this record, and especially in view of the teachings away from round-tripping, Petitioner does not demonstrate a reasonable likelihood that a skilled artisan would have combined Becker’s movement pattern with the Chishti systems and Sachdeva. In particular, the Petition and supporting materials lack sufficient argument and evidence for us to conclude that a person of ordinary skill in the art would have had reason to apply Becker’s movement pattern in the context of an aligner treatment. Becker is a textbook relating to the orthodontic treatment of impacted teeth. Ex. 1006, 1 (Title). Patent Owner correctly states that “Becker is a different orthodontic treatment modality compared to the Chishti references,” using “braces and numerous brackets, wires, and rubber bands, with the wire-and-bracket systems being attached directly and permanently to the teeth.” Prelim. Resp. 21–22; see also supra Section II.D.4. “Becker involves traditional orthodontic practice: manual, by-eye adjustment of its archwires, elastic thread, and palatal wires by a treating orthodontist in repeated office visits.” Prelim. Resp. 22. Chishti-511, in contrast, uses “treatment planning software” to “pre-stag[e] a series of tooth positions from which a sequence of appliances can be manufactured.” Id. On this record, we agree with Patent Owner that “Becker at best shows that round-tripping was an option in limited circumstances involving wire-and-bracket treatment.” See Prelim. Resp. 3. Petitioner does not direct us to any persuasive evidence that using aligners to effect Becker’s tooth transposition “would be appropriate or even possible.” Id. at 22. As Patent Owner correctly notes, Petitioner does not point to any teaching in Becker regarding aligner treatment or corresponding treatment planning software. Id. at 23. Nor are we directed to any portions of Chishti-511, Chishti-876, or Sachdeva that mention using aligners to transpose teeth. These omissions are important because “[i]n contrast to treatment with braces, in which wires are manually adjusted by the orthodontist to move teeth reactively, aligner treatment involves treatment planning in which a detailed path of teeth is calculated in advance.” Id. at 4. Given these differences, Petitioner has not persuasively explained why Becker’s tooth movement pattern and mechanism would have been of interest to a skilled artisan who was” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the August 30, 2006 claimed priority date would have been part of an interdisciplinary team. This team would have included a member with an advanced degree related to dentistry (e.g., BDS, MDS, DDS, DMD) with experience in orthodontics, including 1–3 years of orthodontic training or equivalent experience, and experience using clear aligners. The team may have also included members with a degree in a technical area related to software, graphics, computers, or a related discipline. This technical team member would have had 1–3 years of software development experience. For all team members, more education could substitute for experience and vice versa. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–24; Ex. 1017 ¶¶ 23–25; Ex. 1029; Ex. 1030). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,456,217 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00815 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution because ClearCorrect did not show a reasonable likelihood that claims 1–24 would have been obvious over Chishti-511, Chishti-876, Sachdeva, and Becker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“3. Analysis In view of the arguments and cited evidence, we find on this record that Petitioner has not demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine Becker’s round-tripping with the teachings of the Chishti patents and Sachdeva.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party indicates that any other claim term requires express construction. Only claim terms in controversy need be construed. 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.”). For purposes of this Decision, we determine that no other claim term requires construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITA
“Court for the Western District of Texas (see supra Section I.B), they jointly adopted the definition of “round-tripping” set forth in the ’879 patent Specification. Pet. 9; Prelim. Resp. 8; Ex. 1013, 8. The ’879 patent Specification defines “round-tripping” as moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth. See Ex. 1001, 13:9–13. We adopt this agreed-upon construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,524,879 - PTAB · Oct 23, 2025 · IPR2025-00987 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any of claims 1–37 was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). 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 based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any one 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 ’722 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’722 patent, the background technical field, the prior art, and Petitioner’s proposed definition of the skilled artisan, which is supported with testimony of Dr. Easttom (Ex. 1003 ¶¶ 22–23), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a proposed construction for the term “activation module” implicated in dependent claims 17–19, 23–25, 29–31, and 35–37. Pet. 10–12. Petitioner otherwise argues, “[n]o express construction of the other challenged claims is necessary in this IPR because the prior art renders these claims obvious under any reasonable construction.” Pet. 12. Patent Owner argues that “the Board should apply the plain and ordinary meaning to all challenged claim terms under the Phillips standard.” Prelim. Resp. 9. We find that no express construction of any term is necessary to resolve this case.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“generic “reasons” to combine the alleged teachings of Lawson and Choquier lack rational underpinning, particularly for the specific and substantial modifications of Lawson necessary to reach the subject Mapping Limitation, and are beset with impermissible hindsight. The Board must “recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.”); see KSR, 550 U.S. at 421 (2007) (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1313–14 (CCPA 1971). In this case, Petitioner does not show sufficiently how or why an alleged desire to “increase efficiency, redundancy, and scalability of Lawson’s routing network” would have led the ordinarily skilled artisan specifically to the subject Mapping Limitation, but for using claim 1 as a roadmap. Indeed, as Patent Owner persuasively argues: The Petition fails to tie these generic design goals to the specific functionality that the Petition seeks to cherry-pick from Choquier and import into Lawson. Put another way, the Petition does not explain what about Choquier’s scalability, load balancing and redundancy techniques would have motivated [the skilled artisan] to have configured Lawson’s servers to “determine which server groups (node types) should receive an event update based on this server groups to event producer mapping.” Prelim. Resp. 26–27. Petitioner never identifies how Lawson’s registries of servers/consumers become the claimed gateway-kept category→node-type mapping (EX1005, 10:63–67; 12:36–43). Nor does Petitioner show that Choquier’s service map—not keyed by message category and used for CPU-based server selection—somehow supplies the missing category→node-type routing rule that controls update-message traffic through routing nodes (EX1007, 11:2–22; 12:33–36; 12:56–61). To the contrary, Choquier’s update path increases processing by replicating each update to every server in the service group (EX1007, 21:27–50), which is the opposite of the claim’s mapping-based control that limits which nodes must process a given update. Id. at 30–31. We find this context shows that Petitioner’s reasons for combining Lawson and Choquier (and Tsutsumitake) to achieve the subject Mapping Limitation lack rational underpinning, and that Petitioner’s proposed combination of teachings is based on impermissible hindsight.” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,407,722 - PTAB · Oct 21, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Remand
The Board denied institution on all challenged claims because the conjunctive construction required a hardware action, which the asserted grounds did not show.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). 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). A patent claim is unpatentable under 35 U.S.C. § 103(a) when 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). 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) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“(1) The Claim Language Supports a Conjunctive Construction There is a “heavy presumption” that the terms used in claims “mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” SuperGuide, at 875 (citing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)).” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14 (Paper 10).” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“6 In the Petitioner’s Reply to the Patent Owner’s Preliminary Response, Petitioner presents several arguments to address the Fintiv factors, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). In support of Factor 6, Petitioner argues for the first time that Overton (not Yun or Lu) is allegedly teaching “the hardware (HW) action” aspect of the claims. Prelim. Reply 5 (citing Ex. 1006, 11:13–24 “force feedback . . . to the input devices 142 [shown in Figure 1]”). However, we decline to consider this belated argument raised for the first time in the context of a Fintiv analysis instead of the Petition.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887
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.