• Innolux Corporation v. Phenix Longhorn LLCInstitution denied
  PTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • BurdenDecided for patent owner

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

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

    “and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,557,788
• Tableau Software, LLC v. Icharts LLCInstitution denied
  PTAB · May 14, 2025 · IPR2024-01389 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–4 because Petitioner did not show a reasonable likelihood of establishing unpatentability under any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we do not institute an inter partes review of the ’000 patent.” slip op. at 2

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

    “We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party proposes construing any claim term. Pet. 6; Prelim. Resp. 36. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. 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 7

  • Skill levelSkill level board ownOther

    “3 The parties do not dispute that a skilled artisan “would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services.” Pet. 6 (citing Ex. 1003 ¶ 85); Prelim. Resp. 35– 36. 4 The record does not include allegations or evidence of objective indicia of nonobviousness.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “connotes interactivity, and does not explain why a “Data Animation Effect” would be interactive.6 These aspects of Figure 53 do not appear to show interactivity. Thus, the issue is whether selecting a choice other than “Hide” for “Scroll buttons” in box 710 of Figure 53 adds to chart 840, once published, a feature that allows a user to interact with that chart via scrolling, or whether “Scroll buttons” refers to some other feature of the configuration process (such as the scroll buttons shown in Figure 53 for scrolling through the various charts in the layout). Both experts provide conclusory testimony stating how they view Figure 53. Ex. 1003 ¶ 181 (“For example, Figure 53 of Rostoker shows the ‘Configure Chart View’ toolbar, which includes multiple ‘interactive’ features, such as making the chart ‘Selectable’ (suggesting interactivity using an input device such as a mouse), including ‘Scroll buttons’ to scroll the chart, and adding ‘Data Animation[s].’”); Ex. 2001 ¶ 141 (“Schmandt relies on the ‘Configure Chart View’ toolbar of FIG. 53 of Rostoker, but he is confusing the configuration step 330 of Rostoker with the end result.”). Petitioner invites us to speculate as to the behavior of features that are depicted in Figure 53 but otherwise are not described in any meaningful detail by Rostoker. We conclude that this is insufficient to show a reasonable likelihood of prevailing.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,520,000
• Tableau Software, LLC v. Icharts LLCInstitution denied
  PTAB · May 14, 2025 · IPR2024-01388 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–18 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we do not institute an inter partes review of the ’595 patent.” slip op. at 2

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

    “We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill” slip op. at 6

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

    “We agree with Patent Owner. At most, Jou teaches that it was known to interact with charts in a Windows environment or a browser window. Ex. 1007 ¶ 34. But Rostoker already teaches that a user could interact with a chart, via a graphical user interface in a web browser, while configuring the chart. Ex. 1005 ¶¶ 67–75. Petitioner does not explain persuasively why a skilled artisan, per the teachings of Jou, would have made Rostoker’s published charts interactive. Mr. Schmandt’s testimony that a skilled artisan “would have been motivated to incorporate Jou’s additional ‘interactive’ features into Rostoker’s system to enable users to better visualize and explore business data,” is not supported by his citations to Jou, at least as to whether a skilled artisan would have modified Rostoker’s published charts. Ex. 1003 ¶ 259 (citing Ex. 1007 ¶¶ 8, 9). Petitioner’s argument that Flash and Java could enable interactive features, at most, show that a skilled artisan could have implemented interactive features with Rostoker’s a reason why a skilled artisan would have made these modifications. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))). Thus, we are not persuaded that Petitioner is likely to show that a skilled artisan would have incorporated Jou’s interactive features into Rostoker to make Rostoker’s published charts interactive.” slip op. at 35

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “client is required for display and usage of an existing QlikView document (.qvw file). While the QlikView Server is responsible for opening, hosting, and calculating the document, the clients are required for user interaction and presenting the document and its objects.” Ex. 1009, 123. Petitioner points to no persuasive evidence that a Java or AJAX object or client executing at a web browser is a website separate from the server that serves the object or client. Mr. Schmandt makes conclusory statements to that effect, but does not state the basis for his testimony. Ex. 1003 ¶¶ 338–339. Thus, Mr. Schmandt’s testimony on this point is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and support, and is entitled to little weight.”).” slip op. at 44

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,712,595
• 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
• Vicor Corporation v. Delta Electronics, Inc.Institution denied
  PTAB · Oct 2, 2024 · IPR2024-00706 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • Parallel petitionsDecided for petitioner

    “The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).6 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in the -715 case also support the need for two petitions. Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

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

    “Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. 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))).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,877,534
• Vicor Corporation v. Delta Electronics, Inc.Institution denied
  PTAB · Oct 2, 2024 · IPR2024-00704 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because neither Ground 1 nor Ground 2 showed a reasonable likelihood of proving any challenged claim unpatentable.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless it is determined that “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 (2018). For the reasons below, we determine the information presented in the Petition does not show a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one claim of the ’580 patent, and we do not institute inter partes review.” slip op. at 2

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

    “interpretations are appropriate. Controlling law requires construing claims in an inter partes review using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2021). “In determining the meaning of [a] disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). The Petition does not even purport to apply this controlling law with its Ground 1. In fact, Petitioner acknowledges that its Ground 1 does not apply a “proper” claim construction, describing Ground 1 in contrast to Ground 2 as follows: “Ground 1 is essentially based on what we read their infringement contentions to be, . . . Ground 2 [applies] what we view as the proper construction of the patent.” Ex. 1022, 7:17–8:16. Accordingly, based on this record, we determine Petitioner has not supported the claim interpretations on which its Ground 1 relies, and Petitioner therefore has not shown a reasonable likelihood that it would prevail in its challenge asserted as Ground 1.” slip op. at 8

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

    “But Petitioner states that in the combination presented in Ground 2, “a skilled artisan would have set the current limit threshold based on the current-handling capability of the VTM to protect the VTM from over-current.” Pet. 49–50. “In this circumstance, the PRM would never reach an over-current condition. Rather, the PRM would operate within its normal range.” Pet. 50 (citing Ex. 1003 ¶ 144) (emphasis added). But Petitioner’s description of the proposed combination—in which “the PRM would never reach an over-current condition”—cannot be reconciled with Petitioner’s showings for the “over-current” limitations, which require, e.g., “when the resonant converter generates the over-current” (limitation [1c]). For example, for limitation [1c], Petitioner states “when the VTM exceeds its normal operating current, the PRM (with a duty cycle current limiter as taught by Hwang) would reduce its duty cycle, which would reduce its output voltage and output current, and thus reduce the input voltage and current to the VTM.” Pet. 55–56 (citing Ex. 1003 ¶ 158). But Petitioner and its declarant both state that in the combination proposed in Ground 2, “the PRM would never reach an over-current conduction.” Pet. 50; Ex. 1003 ¶ 144; see Pet. 59 (addressing similar language in limitation [1c]), 61 (addressing limitation [13c]), 63 (addressing limitation [17d]). Petitioner does not explain how those positions can be reconciled, nor does Petitioner adequately explain, much less support, a claim interpretation that would be satisfied by a proposed combination in which the resonant converter never generates an over-current. Accordingly, we determine Petitioner has not shown a reasonable likelihood that it would prevail in the challenges presented as Petitioner’s Ground 2.” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner contends a person of ordinary skill would have had “(1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in the field of power engineering.” Pet. 11 (citing Ex. 1003 ¶¶ 41–42). Patent Owner does not specifically address the level of ordinary skill. At this stage, Petitioner’s proposal appears consistent with the problems and solutions in the ’580 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 6

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,711,580
• Vicor Corporation v. Delta Electronics, Inc.Institution denied
  PTAB · Oct 2, 2024 · IPR2024-00715 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Vicor had not shown a reasonable likelihood of prevailing on any challenged claim over the asserted grounds.

  RulingsInstitution decision

  • Parallel petitionsDecided for petitioner

    “The Board has indicated that “one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide 59 (Nov. 2019) (“CTPG”).7 But “the Board recognizes that there may be circumstances in which more than one petition may be necessary.” Id. Here, although there is overlap in the prior art asserted, there are clear differences in the limitations in the respective claim sets in each case, which requires different analysis. The issues related to a potentially different priority date for claims in this case also support the need for two petitions.8 Additionally, under these circumstances, it is not apparent there has been a substantial benefit afforded to Petitioner by filing two petitions. Thus, we determine that Petitioner’s filing of two parallel petitions does not weigh in favor of exercising our discretion to deny institution in this particular case.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had (1) at least a bachelor’s degree in electrical engineering or a related field, and (2) at least two years of industry experience in power engineering” as of the date of the invention and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 47–48). 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 8 We address the merits of the priority issue below. Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art and its definition appears to be similar to that of Petitioner’s definition. Prelim. Resp. 9. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’534 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “Petitioner argues that “[t]he invalidity issues raised in this Petition may be resolved without any formal claim construction.” Pet. 3. Patent Owner offers no claim construction. Prelim. Resp. 9. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. 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))).” slip op. at 10

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore do not institute inter partes review.” slip op. at 2

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,877,534
• PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.Institution denied
  PTAB · Apr 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “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) (2023).” slip op. at 2

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

    “For the purposes of this Decision, we need not expressly construe any claim terms. 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))). To the extent necessary, we address the parties’ implicit claim constructions in the context of the arguments on the merits of the Petition.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art at the time of the invention would have had “an undergraduate degree in game design, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development,” and that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 67–72). Petitioner’s recitation of the level of ordinary is consistent with the invention disclosed in the ’089 patent. It is also not disputed by Patent Owner at this time. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art, with the exception of the open-ended phrase “at least” which we change to “about.”” slip op. at 9

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

    “Figure 3 above is an example of the embodiment of Ho showing a wings button, a car, and a hamburger monster in the foreground. Ex. 1004, 5:1–5, Fig. 3. Ho describes how the various interactive information elements are used for game play. See id. at 5:11–38. For example, hamburger monster 56 may be engaged when character 52 fights and successfully slays the hamburger monster, car 58 may be engaged when character 52 enters the car, and “wings” button 54 may be engaged (for example when character 52 wishes to fly) by clicking on icon 54 using a pointer, or by using an enclosure moving between different icons to highlight icon 54 to engage the icon. Id. Because Petitioner has not shown persuasive evidence that a user would not have expected those objects to be ones that the user could interact with, Petitioner has not shown them to be background objects. Petitioner also argues that Ho teaches that activating the interactive information elements “does not disrupt gameplay” and is therefore “outside the primary focus of game play.” Pet. 31–32 (quoting 5:36–38). We do not find that argument persuasive for two reasons. First, we do not see how the fact that activating an element without disrupting game play means the element is in the background. Petitioner and its expert simply make a statement without any explanation. See id.; Ex. 1003 ¶ 122. Such conclusory statements are not persuasive. Second, the language in Ho Petitioner relies on is not about the interactive information element, which Petitioner maps to the hotspot. Instead, Ho describes a sub-screen that appears after the user interacts with one of the interactive information elements, namely when the user slays the hamburger monster: “Similarly, making the character 52 slay the hamburger monster 56 may generate a sub-screen showing an advertisement of a chain of fast food restaurants. The sub-screen may also be overlain on the game environment and may not be disruptive to gameplay.” Ex. 1004, 5:35–38. Petitioner does not persuasively explain how a nondisruptive sub-screen that appears after an interaction with an object makes the object a background object.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,688,089
• Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution denied
  PTAB · Apr 25, 2024 · IPR2024-00147 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was obvious 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “to either: (1) “a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media,” or (2) “a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 8 (citing Ex. 1003 ¶ 42). At this stage, Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’156 patent and the asserted prior art.” slip op. at 8

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

    “We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “Petitioner fails to provide a sufficient basis for that contention. See Pet. 20– 21; PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”). Moreover, Petitioner does not contend that Ogdon suggests (or renders obvious) element 1[A][3]. See Pet. 19–21. Further, even if the Petition could be read as including such a contention, we would preliminarily find, on this record, that Ogdon does not suggest storing multiple copies of the same video encoded at different bitrates, and that Petitioner fails to provide any rationale to support a theory that element 1[A][3] would have been obvious over Ogdon alone.11 In other words, even if an ordinarily skilled artisan could have modified Ogdon to store multiple copies of the same video encoded at different bitrates, Petitioner does not provide any rationale to support a contention that an ordinary artisan would have been motivated to implement Ogdon in this 11 The Board instituted inter partes review in other proceedings in which Petitioner contends that claim limitations including some of the same subject matter are taught or suggested by a combination of Ogdon and WO 02/075482 A2 (Allen). E.g., IPR2024-00044, Paper 1 at 21–24. There is no tension between this Decision and those other decisions because Petitioner’s contentions in those other proceedings are based on materially different arguments and evidence. manner. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we determine that Petitioner fails to show a reasonable likelihood that it will prevail on its contention that Ogdon discloses “the video server stores multiple different copies of the video encoded at different bit rates as multiple sets of streamlets,” as required by claim 1. Ex. 1001, 13:58–61 (element 1[A][3]). Consequently, Petitioner does not show that there is a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Ogdon.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,757,156
• Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution denied
  PTAB · Apr 16, 2024 · IPR2024-00048 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–8, and 10–21 were obvious over either asserted ground.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that the level of ordinary skill in the art corresponds to either: (1) “a B.S. degree in computer science or electrical engineering streaming media,” or (2) “a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 51). At this stage, Patent Owner “disputes Petitioner’s definition,” but does not explain what it disputes. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’772 patent and the asserted prior art.” slip op. at 8

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

    “Petitioner does not propose any express claim constructions, but acknowledges that the claims have been construed in the ITC Investigation. Pet. 12–13. At this stage, “Patent Owner does not propose that the Board construe any claims.” Prelim. Resp. 2. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “video (id. at Abs., 2:30–61, 13:47–49, 24:55), and one passage specifically states that one presentation includes “video” while another includes “graphic slides” (id. at 2:61–66). Ogdon references “full animation” and “limited or no animation” (as an example of a “better presentation quality” element that may be retrieved when there is sufficient time to retrieve the data) (id. at 22:44–47), but it fails to disclose that these “animations” are different copies of the same video. Finally, one of Ogdon’s claims recites “a first video portion” and “a different second video portion that corresponds in content with said first video portion,” where the “first and second video portions have substantially different expected data transmission rates.” Id. at claim 9 (emphasis added). However, Petitioner does not sufficiently show that an ordinarily skilled artisan would have understood this (i.e., two videos with corresponding content) to teach two copies of the same video encoded at different bitrates. Dr. Houh’s testimony on this point is conclusory, and thus, we give it little weight. See Ex. 1003 ¶ 65; 37 C.F.R. § 42.65(a); cf. Ex. 2001 ¶¶ 61 n.9, 70–72 (Patent Owner’s expert, Dr. Jeffay, reaching contrary conclusion given other disclosures in Ogdon). To the extent Petitioner seeks to rely on an inherent disclosure, Petitioner fails to provide a sufficient basis for that contention. See Pet. 21– 22; PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”). Moreover, Petitioner does not contend that Ogdon suggests (or renders obvious) element 1[A][2]. See Pet. 20–22. Further, even if the Petition could be read as including such a contention, we would preliminarily find, on this record, that Ogdon does not suggest storing multiple copies of the same video encoded at different bitrates, and that element 1[A][2] would have been obvious over Ogdon alone.10 In other words, even if an ordinarily skilled artisan could have modified Ogdon to store multiple copies of the same video encoded at different bitrates, Petitioner does not provide any rationale to support a contention that an ordinary artisan would have been motivated to implement Ogdon in this manner. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,868,772

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.