- Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00252 · APJ John A Hudalla · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 8–23 obvious over any asserted combination.
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) (2024); Paper 8 (referral to panel after no discretionary denial briefing under the Interim Processes memorandum). 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 that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art (“POSA”) “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 16–17 (citing Ex. 1001 ¶¶ 78–82). Patent Owner contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 20–21 (citing Ex. 2001 § IV.C). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“obviousness contentions based on Ellis and Spivey rely expressly on the use of a “known webserver” to perform the “transmitting first instructions” limitations excerpted above. See Pet. 28–34. Yet Petitioner does not specify how such a webserver would be integrated with the other elements from Ellis and Spivey cited by Petitioner. At best, Petitioner provides a background section on the known use of webservers (see id. at 11 (citing Ex. 1001 ¶¶ 49–53, 127–134)), but this does not provide a rationale for integrating a webserver in the Ellis–Spivey combination. We also have considered Petitioner’s cited testimony from Dr. Wicker supporting this background section. The first cited portion, which is located at paragraphs 49–53 of Dr. Wicker’s declaration, supports the premises in the background section, but does not include a rationale for adding a webserver to the Ellis– Spivey combination. See Ex. 1001 ¶¶ 49–53. The second cited portion, which is located at paragraphs 127–134 of Dr. Wicker’s declaration, includes a rationale for modifying the Ellis–Spivey combination to include a webserver.3 See Ex. 1001 ¶¶ 127–134. But that rationale is completely 3 The cited rationale in Dr. Wicker’s declaration appears to be tailored to support Petitioner’s obviousness contentions in IPR2025-00251, where unaddressed in the Petition. We decline to assume that Petitioner adopts Dr. Wicker’s testimony about the rationale as its position, because that would amount to improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). See Patent Trial and Appeal Board Consolidated Trial Practice Guide at 35–36 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)) (stating that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00251 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of success, chiefly due to unsupported webserver teachings and motivation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Analysis We are not persuaded by Petitioner’s rationale for adding a facilitator- type webserver to the Ellis–Spivey combination based on “POSA’s Knowledge.” First, Petitioner’s combination of Spivey with Ellis is already allegedly based on improving latency issues via the incorporation of Spivey’s LDSD and MQSD in Ellis’s system. See Pet. 22–24. Petitioner touts that this modification would result in reduced latency to a time period “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. at 23 (citing Ex. 1017 ¶ 96). But the Petition does not establish whether this latency improvement would or could be maintained when adding a separate webserver, as it has proposed. And Dr. Rubin testifies that the inclusion of an additional webserver—an additional component—is likely to create latency insofar as it must receive, process, and/or handle data. Ex. 2001 ¶ 305. We are persuaded by Dr. Rubin’s testimony, and we find that adding a webserver to Petitioner’s existing Ellis– Spivey combination tends to undermine Petitioner’s foundational rationale for combining these references, which is the reduction of latency. See Pet. 23.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Third, we agree with Patent Owner (Prelim. Resp. 49) that Petitioner does not explain sufficiently why an ordinarily skilled artisan would have added a facilitator-type webserver to the Ellis–Spivey combination when neither reference teaches or suggests a webserver for facilitating communication between a client and a socket server. Dr. Wicker’s supporting testimony stresses that “webservers were well-known components in streaming systems that were useful for facilitating communication between client devices and socket servers, and client devices and media sources.” Ex. 1001 ¶¶ 128–132. But “obviousness 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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to provide any persuasive reason with a rational underpinning why an ordinarily skilled artisan would have been motivated to add a webserver to the existing Ellis–Spivey combination.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 8. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 34 (citing Ex. 1001 ¶ 163). Thus, Petitioner argues that a “first event socket corresponding to the first event information” is “a socket where information about one sporting event is provided to VCDs.” Id. Patent Owner states that “[e]xcept for the ‘socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 20–21. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution deniedPTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- Skill levelOther
“B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,287,591 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Institution deniedPTAB · Mar 31, 2025 · IPR2024-01434 · APJ Jennifer S Bisk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the single claimed design was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“shown that Chen686, alone or in combination with the various secondary references, teaches or suggests a camera having the same overall visual appearance of the claimed design. Thus, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of the ’435 patent’s claim over Chen686 and the asserted secondary references.” slip op. at 30
- Other 314aNot reached
“These deficiencies in analysis raise the question of whether the Petition adequately identifies the number of actual challenges, and evidence supporting each, with the degree of particularity required of petitions in our forum. The Petition does not explain why so many grounds are necessary under the circumstances or why the Board should impose on Patent Owner the burden of defending against so many challenges. See generally Pet. An inter partes review based on 24 distinct grounds raised against a single claim, supported by analysis lacking in particularity, potentially burdens Patent Owner unduly and makes inefficient use of the Board’s resources. See PTAB Consolidated Trial Practice Guide (Nov. 2019),22 56 (“The AIA was ‘designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.’” (quoting H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews were meant to be “quick and cost effective alternatives to litigation”)). Because we understand enough of the Petition’s analysis to address each group of asserted grounds on the merits, we decline to exercise our discretion to deny institution based solely on this issue.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner submits that a designer of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in industrial design or an equivalent field, or two years of experience designing cameras or camera housings.” Pet. 11 (citing Bressler Decl. ¶¶ 22–24). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s uncontested proposal regarding a designer of ordinary skill in the art. See Bressler Decl. ¶¶ 22–24.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In its claim construction section, Petitioner states that the ’435 patent “encompasses a rectangular body with flat faces, a rectangular lens cover extending outward from the front of the body, rectangular buttons/access elements, and rectangles for displays” and “[a]s a whole . . . gives an ordinary designer an overall visual impression of a rectangular design for a camera/camera housing.” Pet. 12 (citing Bressler Decl. ¶¶ 25–26). These descriptions are incredibly general and do not provide an adequate understanding of the overall visual appearance of the claimed design. Moreover, we do not find them helpful in our analysis and, therefore, do not adopt them as a claim construction. Patent Owner does not explicitly address claim construction. See” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham - Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 10, 2025 · PGR2024-00049 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show the patent was eligible for PGR; the challenged claims were supported by the 2006 priority application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006. 2. Conclusion: PGR Eligibility For the foregoing reasons, and based on the record before us, we determine that Petitioner has not demonstrated that it is more likely than not that the ’202 patent has, or had, at least one claim having an effective filing date on or after March 16, 2013. Accordingly, we determine that the ’202 patent is entitled to the filing date of the ’634 application (October 18, 2006), and, thus, the ’202 patent is not eligible for post-grant review.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Accordingly, the ’202 patent consistently and repeatedly characterizes the invention as incorporating tobacco in some form and ties the stated benefits of the invention to the inclusion of tobacco. Moreover, the Specification is directed to smoking articles containing tobacco, all of the embodiments include tobacco, and “the present invention” is described as a smoking article, where the smoking article includes tobacco. Consequently, we determine that “smoking article” as it is used in the challenged claims is limited to devices that include tobacco. See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1361 (Fed. Cir. 2022) (finding claimed “lip” is limited to “extrudable plastic materials” where specification states that “the device of the present invention is constructed of extrudable plastic materials” and “emphasizes the benefits of using extrudable plastics and describes them as benefits of the invention as a whole”); Poly-Am., L.P. v. described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”); Phillips v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner’s argument is dependent on accepting Petitioner’s assertion that the claims include a smoking article that does not contain tobacco, which we have not done. Instead, as set forth above, we construe “smoking article” as being limited to devices that include tobacco. See § II.B.2, supra. Based on our construction of “smoking article” and the evidence of record in this proceeding, we determine that the challenged claims are supported by the specification of the ’202 patent, which is identical to the specification of all of the continuations in the chain leading back to the October 18, 2006 that the specification of the ’202 patent and every patent in its priority chain “have identical specifications”); Prelim. Resp. 13 (noting that Petitioner does not identify other limitations in the challenged claims “allegedly lacking support in the ’202 patent family’s applications dating back to U.S. App. No. 11/550,634, filed on October 18, 2006”). Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006.” slip op. at 17
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,925,202 - A&A Global Imports, Inc. v. Lerman Container CorporationInstitution deniedPTAB · Jan 22, 2025 · IPR2024-01138 · APJ Jennifer S Bisk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the single claim would have been obvious over any of the four asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the parties’ arguments and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of the ’151 patent’s claim. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner submits that a designer of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in Industrial Design, Mechanical Engineering, or related field and approximately 5 years of professional experience in the field designing consumer products.” Pet. 42 (citing Fletcher Decl. ¶ 48). Petitioner adds that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not dispute this proposed definition. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s uncontested proposal regarding a designer of ordinary skill in the art. See Fletcher Decl. ¶ 48; Rake Decl. ¶ 29.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and Petitioner’s failure to persuasively explain why the particular proportion depicted in the ’151 patent is preferable to any other, Petitioner has not sufficiently shown that this proportion is primarily functional and should not be considered as part of the ornamental design. See, e.g., LA Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (“When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”). Moreover, we agree with Patent Owner that the differences in proportion between Neutrogena and the claimed design contribute significantly to the overall visual impression of the design. See Prelim. Resp. 28 (“[T]he two designs considered as a whole present dramatically different visual appearances.”), 33–36 (“To get from the Neutrogena jar design . . . to the design of the D ‘151 patent would require entirely changing the proportions of the jar—from a short neck with a tall base to a tall neck with a short base . . . .”). For example, Patent Owner creates an image showing that simply changing the height of the Neutrogena jar neck to have the same neck-height to base-height ratio as the ’151 patent without changing the other dimensions of the jar would yield a “ridiculous result.” Id. at 37. We agree that the two images, reproduced below, do not convey the same overall visual impression. This figure contains two images side by side. On the left is a side view drawing of the claimed jar. On the right is a front side image of the Neutrogena jar with the image manipulated to show a neck to base proportion equivalent to that of the claimed jar drawing. Prelim. Resp. 38. The images above show a figure from the ’151 patent, above left, and Patent Owner’s created image of Neutrogena, above right, with only the neck height modified to match the proportion of neck to base height shown in the ’151 patent. Although we do not necessarily agree with Patent Owner’s assertion that the created Neutrogena image represents the proposed combination asserted in the Petition, or that the modified image created by Patent Owner is accurate, we do agree with Patent Owner that the image of the modified Neutrogena jar illustrates that the proportion of neck height to base height contributes to ornamental aspects of the claimed jar and significantly affects the overall visual impression.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find these aspects of the design significantly affect the overall visual impression of an otherwise simple design, particularly in an otherwise crowded art. Petitioner addresses these differences by stating that a designer of ordinary skill in the art “would have understood that different degrees of radius for the concave bottom surface would be a design choice for volume and accessibility to the contents, especially together with the radiused transition between the sidewall and bottom surface.” Pet. 56 (citing Fletcher Decl. ¶ 98). However, the present record does not support a finding that, even though other interior compartment shapes and depths are available, functionality dictates a certain shape and depth. Petitioner cites no other prior art that shows an interior compartment with a shape and depth equivalent to that shown in the ’151 patent. See Pet. 28–29 (showing annotated versions of Huang’s drawings, which do not clearly show the shape or depth of the interior compartment), 63 (proposing to modify Huang’s two chamber interior compartment with that of Canamasas Puigbo), 85–88 (showing the McKernan Jar drawings, which do not indicate the shape or depth of the interior compartment); Ex. 2002, 13 (explaining that the interior of Zamberlan is different in shape and depth than the claimed design). We are not persuaded to the contrary by Petitioner’s expert testimony. Mr. Fletcher testifies that Canamasas Puigbo “explicitly discloses a concave bottom surface in an article having more visually similar design, which would provide ample motivation to incorporate the feature.” Fletcher Decl. ¶ 98 (emphasis added). Thus, Mr. Fletcher appears to agree that the shape of the Canamasas Puigbo’s internal compartment is noticeably different than that of the ’151 patent. Mr. Fletcher does not address why a designer of ordinary skill in the art would have overlooked these differences or found them so minimal as to not affect the overall impression of the resulting modified jar. For example, Mr. Fletcher does not support this conclusion with any objective evidence, such as pointing to other prior art with an interior compartment the same shape and depth as that of the ’151 patent. Nor does Mr. Fletcher otherwise explain why a designer of ordinary skill in the art would have chosen to use the particular shape and depth claimed by the ’151 patent as opposed to all other possible configurations. See, id. ¶¶ 83–101. Moreover, as noted above, “expert testimony cannot take the place of disclosure from patents or printed publications.” 2019 Trial Practice Guide at 36. Accordingly, even after combining the visual features of Neutrogena and Canamasas Puigbo as proposed by Petitioner, the record evidence does not support Petitioner’s assertion that a designer of ordinary skill in the art would have found it obvious to modify Neutrogena such that its internal compartment is the same shape and depth as claimed by the ’151 patent.” slip op. at 32
§ 103 obviousnesscites Graham - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16
- Prior constructionPrior construction adoptedDecided for petitioner
“For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 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” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,880,715 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00570 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–8, 11, 15–17, and 20 were obvious.
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) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to at least one of the claims. Accordingly, we do not institute an inter partes review of the ’830 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that person of ordinary skill in the art (POSITA) would have an engineering-related undergraduate degree such as electrical, mechanical, or computer engineering, with at least two years of experience with computer-controlled electrical or electronic systems, or equivalent academic experience (e.g., a master’s degree with a similar focus). The POSITA could have also obtained similar knowledge and experience through a combination of education and experience in the above. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’830 patent specification.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“As Patent Owner shows, the specification reveals that in step 762, “the routine ‘control’ computes an output value p corresponding to the currently selected strength, stored in the variable strength, and outputs the value p to the power supply so that the power supply outputs an appropriate current to the coil.” Id. at 15 (emphasis added) (quoting Ex. 1001, 8:20–30). Step 762 corresponds to, for example, control input 624 transmitted from CPU 602 to power supply 612 of Figure 6 to control the current from power supply 612 to coil 626. See supra Section II.C (describing Fig. 6); Ex. 1001, 6:41–44 (“The power supply 612 receives a control input 624 from the CPU to control the current supplied to the H-bridge switch 618 for transfer to the coil 626.”). The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 12–13 (quoting Ex. 2001, 12–14).” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–42; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,941,830 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00569 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 2 or 3 were unpatentable under the asserted obviousness grounds.
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) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that Petitioner does not show a reasonable likelihood of prevailing with respect to at least one of claims 2 and 3, the remaining “challenged claims” per the disclaimer. Accordingly, we do not institute an inter partes review of the ’337 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that person of ordinary skill in the art (POSITA) would have an engineering-related undergraduate degree such as electrical, mechanical, or computer engineering, with at least two years of experience with computer-controlled electrical or electronic systems, or equivalent academic experience (e.g., a master’s degree with a similar focus). The POSITA could have also obtained similar knowledge and experience through a combination of education and experience in the above. Pet. 11 (citing Ex. 1003 ¶ 129). Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“called in step 716 in FIG. 7A” (Ex. 1001, 8:10–11), where Figures 7A–7C “illustrate the control program, executed by the CPU, that controls operation of an LRVM” (id. at 6:43–45). Essentially, Figures 7A–7C represent a disclosed algorithm used with a CPU of a microprocessor with memory for implementing the algorithm to control the supply of current from a power supply to a coil surrounding a moveable magnet. See, e.g., Ex. 1001, Fig. 6; supra Section. II.C. “the routine ‘control’ computes an output value p corresponding to the currently selected strength, stored in the variable strength, and outputs the value p to the power supply so that the power supply outputs an appropriate current to the coil.” Prelim. Resp. 16 (emphasis added) (quoting Ex. 1001, 8:10–20). Step 762 corresponds to, for example, control input 624 transmitted from CPU 602 to power supply 612 of Figure 6 to control the current from power supply 612 to coil 626. See supra Section II.C (describing Fig. 6); Ex. 1001, 6:33–35 (“The power supply 612 receives a control input 624 from the CPU to control the current supplied to the H-bridge switch 618 for transfer to the coil 626.”). The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 14–15 (quoting Ex. 2002, 4–5). In summary, limitation 2.f recites “a control component that controls supply of power from the power supply to the driving component to cause the moveable component to oscillate at a frequency and an amplitude specified by user input received from the user input features.” Step 762, which corresponds to control input 624 transmitted from CPU 602 to power supply 612 in the block diagram of Figure 6, is a clear link of algorithmic structure to the recited function of “control[ling] supply of power from the” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 34 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). As indicated in Section III.C, if the corresponding structure is a microprocessor, limitation 2.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 2.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 19. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic Goldenberg,” and Tierling. Id. at 19, 23.14 The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston, Goldenberg, and Tierling teaches outputting any value to a power supply as limitation 2.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1. In addition, although not necessary to our decision based on the dispositive claim construction issue discussed above, the Petition fails to show that the combination of Houston, Goldenberg, and Tierling teaches the “control component” algorithmic structure corresponding to the function of “caus[ing] the moveable component to oscillate at a frequency” as recited in limitation 2.f. Specifically, the Petition fails to show that the combination of Houston, Goldenberg, and Tierling teaches the following corresponding structure of the control component according to our claim construction: “at least one timer or equivalent to control a periodic change in direction of the current supplied to the coil . . . by providing a control value . . . such that the value flips according to the timer or its equivalent.” See supra Section II.C; Pet. 35–44.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,860,337 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00568 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8, 11, or 17 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 22
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 13 (quoting Ex. 2002, 9).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,369,081
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.