• 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
• Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution denied
  PTAB · Oct 20, 2025 · IPR2025-00480 · APJ Lisa A Murray · IPR · Institution

  The Board denied institution because the Elliott/Jacob grounds did not show a reasonable likelihood that claims 1–15 were unpatentable, and Musk did not cure the deficiencies.

  RulingsInstitution decision

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

    “c) Summary We may institute an inter partes review when “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). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a Bachelors’ degree in electrical or computer science or a comparable field of study, plus at least three years of professional experience in advertisement delivery systems or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 3; Ex. 1002 ¶ 79. Patent Owner does not offer a competing formulation, stating that “[f]or purposes of this preliminary response only, Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 12. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’296 Patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 6

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

    “After reviewing the parties’ arguments and evidence, we determine that no express constructions of the terms identified by Petitioner are needed 6 For the term “recording a request identifier associated with the request,” Petitioner asserts that it is unclear which “request” is at issue, Pet. 7–8, while Patent Owner argues that “the ‘request’ refers to the ‘request for content to be used within the registered application program’ as described in claim element 1.h.” Prelim. Resp. 13. For the reasons discussed below, we determine that it is not necessary for us to construe this term for purposes of this Decision. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). C.” slip op. at 7

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

    “as obvious over the combination of Elliott and Jacob. Pet. 9–60. Patent Owner contests Petitioner’s mapping of the cited prior art to four limitations in independent claim 1 (and the commensurate limitations in independent claims 6 and 11): limitations [1.a], [1.b], [1.d], and [1.e]. Prelim. Resp. 14– 39. Patent Owner also argues that one of ordinary skill in the art would not have been motivated to modify Elliott with the teachings of Jacob. Id. at 39– 46. We agree with Patent Owner that the proposed combination does not teach or suggest elements [1.a] and [1.e], for the reasons discussed below. Because the absence of these two elements from the cited prior art is a sufficient basis for denying institution, we do not address Patent Owner’s remaining arguments.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,433,296
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution denied
  PTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution

  The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.

  RulingsInstitution decision

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

    “Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13

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

    “For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24

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

    “Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,499,168
• ROKU, Inc. v. Dolby International ABInstitution denied
  PTAB · Apr 3, 2025 · IPR2024-01354 · APJ Stephen E Belisle · IPR · Institution

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

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’757 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not present an alternative definition. See Prelim. Resp. 10 (“For purposes of this preliminary response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’757 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶¶ 19–24), we apply the level of skill set forth above.” slip op. at 10

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

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

  • Expert testimonyPatent owner expert creditedDecided for patent owner

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

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,339,757
• Cellco Partnership D/B/A Verizon Wireless / T-Mobile USA, Inc. et al. v. Aspen Networks, Inc.Institution denied
  PTAB · Mar 17, 2025 · IPR2025-00008 · APJ Donald E Daybell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–28 were unpatentable over Tagg or Kottilingal and Politis.

  RulingsInstitution decision

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

    “There is, however, a consistent thread that flows through the relevant disclosures of the specification; namely, that the “state involving the SIP sequence” is maintained throughout a dialog. Ex. 1001, 5:1–38 (step 210); see also id. (step 160). Using the method of Figure 4, including steps 160 and 210 and maintaining the SIP signaling state, is how the ’554 Patent discloses that calls are not broken or dropped. See, e.g., id. at 7:10–25. Maintaining the “state” of the SIP signaling sequence includes (but is not limited to) the teachings that a “SIP signaling sequence number” is maintained, as well as the details of how that number is maintained, as set forth in the specification. We find that the state of the SIP signaling sequence as that term is used in the specification refers to the rules (or paradigm) used to identify a collection of SIP signals as a “SIP signaling sequence,” and in particular the rules used to identify the next SIP packet received as belonging to a sequence of packets previously received. One key to the disclosed invention discussed in the specification is the concept that the invention prevents a call 3:45–4:9. The specification contends that the invention accomplishes this goal by configuring the packets involved in a VoIP call such that the receiving device (e.g., a SIP server) is able to recognize those packets as belonging to the same call, even though the packets are received over different paths. Id. at 7:35–50; 7:60–8:3. The particular way that the receiving devices are able to recognize that the packets are part of the same call is, per the claims, because the SIP signaling sequence is maintained after a network switch. Id. at 8:27–29. Thus, where a sequence of SIP signals uses numbers such as cseq values, there is a rule for identifying what the next signal in the sequence is. Ex. 1001, 5:1–38. A receiving device that knows the rule can identify an incoming packet as the next packet in the same signaling sequence as previously received packets, by applying the rule. Id. at 7:35–50. The specification provides one example rule, that the next SIP signal bears a monotonically-increasing cseq number. Id. at 5:1–38. But there could be other such rules as well. For example, the value could be monotonically decreased, or the value could be determined using some other formula.8 The claims also do not require that the sequence of SIP signals use “numbers” as sequence identifiers.9 Other labeling paradigms could be possible as well, 8 Patent Owner’s litigation claim construction improperly imports implementation details from the preferred embodiment, such as “cseq numbers” and the limitations that these numbers “monotonically increase” for new transmissions, or be “preserved” for re-transmissions. While such embodiments would be one way of maintaining a SIP signaling sequence, the specification does not clearly limit the invention to only these embodiments. 9 Petitioner’s litigation claim construction improperly imports the limitation from the preferred embodiment that the SIP signaling sequence must be” slip op. at 14

  • Skill levelSkill level board ownDecided for patent owner

    “as of the time of the invention of the ’554 Patent “would have been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement” and would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in electrical engineering or computer science and two years of experience; or by obtaining a Master’s degree in electrical engineering or computer science, but having only one year of experience; or by having no formal education but experience in network service plan provisioning systems of at least four years. Pet. 10. 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’554 Patent was filed before the effective date of the relevant amendment, the pre- AIA version of §103 applies. that a POSITA must specifically have “been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement.” Prelim. Resp. 17–18. At this juncture, we adopt the agreed-upon portion of Petitioner’s definition, without the specific requirement relating to designing rules. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that the applied prior art may reflect an appropriate level of skill). Our analysis would be the same under either definition.” slip op. at 8

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

    “determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has not shown a reasonable likelihood of success in establishing that any claim of the ’554 Patent is unpatentable, and thus we decline to institute review. The Petition is denied, and inter partes review is not instituted.” slip op. at 2

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

    “We disagree with Petitioner’s view of Tagg. At best, the cited portions of Tagg disclose that SIP is used by endpoint 1512 to communicate with SIP server 1500, and by the SIP server to communicate with SIP proxy 1504. Figure 15 discloses that SIP is used for both of the paths from endpoint 1520 to SIP server 1500, via the WWAN or the WLAN. Figure 15 further discloses that SIP is used for the path from SIP server 1500 to SIP proxy 1504. But Figure 15 and the accompanying text are silent about any “sequences” of SIP signals at all, much less whether any such “sequences” are maintained, as required by the language of limitation 1.6. Ex. 1005 ¶¶ 324–346, Fig. 15. Instead, Tagg’s specification simply discloses that SIP is used to perform call management functions. Id. ¶¶ 245–247. Tagg’s cases 1 and 6, relied on by Petitioner, teach that Tagg’s server can ensure that the end user appears to the rest of the world (i.e. the devices upstream of the SIP server) as if no network change is being made. Ex. 1005 ¶ 320. Tagg further teaches that either “make before break” or “make and break” schemes may be used. Id. But these cases do not explain how any SIP signaling sequences are used, much less how or even that any SIP signaling sequence is maintained when a network switches. At most, Tagg teaches that each path will have an IP (Internet Protocol) address, which may be the same or different for each path. Id. ¶ 288. But IP addresses are part of the IP disclosing or suggesting that IP addressing schemes are maintained or otherwise accounted for in a network switch, that would not be sufficient to disclose or suggest that SIP signal sequences are maintained. Furthermore, under our construction of limitation 1.6, it must be shown that the same rules or paradigm used to identify that an incoming SIP packet is the next SIP packet in a sequence, regardless of whether that packet is transmitted on the first network path or the one of a plurality of alternative network paths. The Petition is silent on this point. The closest Petitioner comes is the assertion that Figure 15 depicts preservation of “the same SIP signaling sequence,” with the Petitioner’s explanation being that Tagg allows simultaneous connections across a WWAN and a WLAN, and that “POSITAs would have understood that Tagg’s SIP protocol uniformity in directionality teaches that a ‘SIP signaling sequence . . . is maintained.’” Pet. 39–40.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,009,554
• Lenovo (United States) Inc. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Feb 18, 2025 · IPR2024-01226 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Lenovo had not shown a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “identifies and refers to a valid region of the integrated circuit memory device as having a three-dimensional boundary delimited by phase ranges in command/address signals, data signals, and sampling signals. Nowhere does the ’835 patent specification indicate a valid region of the integrated circuit device as a whole can be represented by values for less than three parameters x, y, and z, all together, e.g., the command signals, the data signals, and the sampling signals. Also, the ’835 patent describes that the purpose of determining the boundaries of a valid region is to configure an optimal operating point for the integrated circuit device. Ex. 1001, 5:48–51. We have also considered other language in the claims. Each of independent claims 1 and 7 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operation range.” Ex. 1001, 6:56–7:4, 7:18–34. Each of independent claims 12, 20, and 23 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operating range.” Ex. 1001, 7:46–60, 8:28–44, 8:62–10:4. Based on the foregoing, the specification informs us that “valid operation range” is a three-dimensional range. We recognize that the specification does not expressly exclude a two-dimensional range or multiple two-dimensional ranges from being a “valid operation range” of the integrated circuit device. However, that is why we construe the claims to determine what, if anything, may be required despite a lack of express recitation in the claims.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Baker, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Pet. 4 (citing Ex. 1002 ¶¶ 31–35). Patent Owner’s expert, Mr. Lee, testifies: “I agree with Petitioner that [Petitioner’s statement of the level of ordinary skill] would be the minimum qualifications for a POSITA.” Ex. 2001 ¶ 35. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, i.e., that a POSITA “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Ex. 1002 ¶ 34. The stated level is supported by the testimony of Dr. Baker and not disputed by Patent Owner. Further, it 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). C.” slip op. at 12

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

    “Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31

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

    “Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,646,835
• Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution denied
  PTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution

  The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.

  RulingsInstitution decision

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14

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

    “cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. Intellectual Ventures I, LLCInstitution denied
  PTAB · Jan 28, 2025 · IPR2024-01244 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 obvious over either asserted prior-art combination.

  RulingsInstitution decision

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

    “Petitioner’s reasoning is misplaced and unpersuasive. Per limitation 1[b][ii], which modifies limitation 1[b][i], it is the cyclic advance in limitation 1[b][i] that must be “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” Ex. 1001, 9:37–41. Petitioner has shown the amount of the 1-sample delay in Larsson’s Figure 8 is “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” But that is not what is required by the claim. Petitioner has not shown the amount of the cyclic advance relied upon by Petitioner to satisfy the cyclic advance requirement of limitation 1[b][i] meets the duration requirement of limitation 1[b][ii].” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “POSITA”) “would have at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, with at least two or more years of experience in the field of wireless communication systems and protocols, with more education substituting for work experience and vice versa.” Pet. 7 (citing Ex. 1003 ¶ 31). Patent Owner does not make any averment with respect to the level of ordinary skill in the art and also does not dispute Petitioner’s assertion regarding the level of ordinary skill in the art. See generally Prelim. Resp. slip op. at 16

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

    “A court in W.D. Tex. construed the term “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.” See EX1009 at 8. Although that construction was adopted in a different case, Petitioners and Patent Owner agreed in their Joint Claim Construction Statement in the parallel litigation (the “Texas Litigation” as defined below) that this construction is appropriate. See EX1010.” slip op. at 19

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “We agree with Petitioner that limitations 19[a], 19[b], 19[c], and 19[d] are means-plus-function elements under 35 U.S.C. § 112, sixth paragraph, and we have no reason to disagree with Petitioner’s identification of corresponding structure in the ’439 patent’s specification. We adopt Petitioner’s statement of construction for these means-plus-function elements. D.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,623,439
• Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution denied
  PTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution

  The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.

  RulingsInstitution decision

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24

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

    “presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32

  • Obviousness (§103) › Analogous artNot reached

    “b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• Cub Elecparts Inc. v. Orange Electronic Co., Ltd.Institution denied
  PTAB · Nov 12, 2024 · IPR2024-00744 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have a bachelor’s degree in electrical engineering and at least one year of experience in sensor/detector design or RF communications (RFIDs)” and “would have a working knowledge of tire pressure management systems and, as most POSA would also be automobile owners, would have had personal experience with tire pressure management systems which have been required in all new cars, trucks, and SUVs in the United States since 2007.” Pet. 17. Petitioner adds that “[e]ducation may substitute for experience and vice versa.” Id.” slip op. at 12

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

    “Petitioner contends that all claim terms should be given their ordinary and customary meaning. Pet. 17. Petitioner notes that, in the tire pressure detecting field, terms such as “detector,” “sensor,” and “monitor” relate to the same device and can be used interchangeably. Id. at 17–18. Patent Owner contends that no claim term needs construction to resolve the grounds asserted in the Petition. Prelim. Resp. 16. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the” slip op. at 13

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

    “We agree with Patent Owner that Petitioner’s unsupported assertion that tire pressure sensors typically are programmed with only the ID as part of the factory installation is insufficient to establish obviousness in this instance. Petitioner does not provide adequate reasoning or evidence to 11 Petitioner relies on the same analysis of this claim 26 limitation for the substantially similar limitation of claim 27. Pet. 66. Accordingly, our analysis of the claim 26 limitation applies equally to the corresponding limitation of claim 27. art would have known that tire pressure sensors typically are programmed at the factory with a single ID. Furthermore, even if assuming for the sake of argument that Petitioner’s assertion is correct, the Petition fails to explain adequately how or why one of ordinary skill in the art would have modified the combination of Tang and Lemense to store only the old identification in the old tire pressure detector.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,031,064

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.