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

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

  RulingsInstitution decision

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

    “c) Summary We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsInstitution decision

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

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

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

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

  • Expert testimonyPatent owner expert creditedDecided for patent owner

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

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

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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,499,168
• Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution denied
  PTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsInstitution decision

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2

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

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

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

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

  • Obviousness (§103) › Analogous artNot reached

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

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution denied
  PTAB · Oct 25, 2024 · IPR2024-00970 · APJ William V Saindon · IPR · Institution

  Institution was denied for claims 1–11 because the petition did not sufficiently explain why a skilled artisan would combine TUKATECH’s features with EZBRUSH.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5

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

    “Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Similarly, Petitioner asserts that adding “TUKATECH’s suggested techniques” to EZBRUSH “would be merely the application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43 (citing Ex. 1003 ¶ 62). Petitioner asserts that a person of ordinary skill in the art “would have recognized that applying the suggested user interface improvement from TUKATECH to EZBRUSH’s CAD system would have led to predictable and helpful results with a reasonable expectation of success.” Id. (citing Ex. 1003 ¶ 62). Similar to the discussion above, we have reviewed the cited paragraph of Petitioner’s expert’s declaration and find insufficient credible evidence supporting Petitioner’s naked assertions regarding what was an “application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43; Ex. 1003 ¶ 62. To the extent Petitioner is arguing that obviousness can be established merely by showing that EZBRUSH and TUKATECH are in the same field of endeavor (e.g., Pet. 43 (“both [are] directed toward CAD systems”)), we disagree. We are not aware of any authority supporting such an argument. Petitioner has not sufficiently explained why or how it would have been obvious to apply the length comparison information from the table of TUKATECH’s size reshaping feature to EZBRUSH in a manner that meets each step of the claim. Thus, Petitioner’s additional reasons for modifying EZBRUSH to implement TUKATECH’s sizing table are also untenable.” slip op. at 10

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

    “C. Claim Construction Under 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, 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 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,733,773
• Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution denied
  PTAB · Oct 25, 2024 · IPR2024-00967 · APJ William V Saindon · IPR · Institution

  The Board denied institution because Petitioner did not show why a skilled artisan would have combined Niterra’s wire-length features with EZBRUSH’s clothing design software.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The expert provides no citation for his “smooth seam” rationale. Moreover, Petitioner’s expert, who has extensive knowledge in CAD drawing systems (e.g., id. ¶ 3), does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statement, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “smooth seam” rationale no weight. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 9

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

    “asserts that it would have been obvious to add these features from Niterra’s circuit board designer into the clothing designer of EZBRUSH. Pet. 45–50. Petitioner asserts that the reason to do so is because “it would have been desirable to select the sewing segments to be equal in length when seeking a clean, smooth seam that prevents bunching or unintended stretching of the material.” Id. at 45 (citing Ex. 1003 ¶ 64). Petitioner then goes on to explain various benefits from adding these “smooth seam” features. Id. at 46–50. Patent Owner argues that “[Petitioner’s] rationale is completely rooted in hindsight” because nothing in the prior art describes a desire to seek a smooth seam. Prelim. Resp. 69. Turning back to the Petition, we see that Petitioner’s “smooth seam” rationale is underpinned by a citation to its expert declaration. Pet. 45 (citing Ex. 1003 ¶ 64). The expert, in turn, repeats the language from the Petition, but provides no explanation as to the underlying facts or data on which his opinion is based. He states: A [person of ordinary skill in the art] would have known that when using the resulting CAD system (EZBRUSH as modified by Corel and Thoemmes (detailed above)) to digitally “sew” two garment patterns together, selecting the sewing segments to be equal in length would have been desirable when seeking a clean, smooth seam that prevents bunching or unintended stretching of the material. Ex. 1003 ¶ 64.” slip op. at 9

  • Skill levelNot reached

    “B. Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art as of the Critical Date (“POSITA”) would have had a minimum of a bachelor’s degree in an engineering, computer science, graphic design, or a related field plus 2–3 years of work and/or research experience in the field of computer aided design (CAD) software. [Ex. ]1003, ¶23. Graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. Pet. 21. Patent Owner proposes a different standard: A [person of ordinary skill in the art] to which the ’355 Patent pertains would have had a minimum of a bachelor’s degree in mechanical engineering, textile engineering, computer engineering, computer science, graphic design, or an equivalent degree, with at least 2–3 years of experience in software design for the creation of digital or virtual clothing. EX2001, ¶56. Prelim. Resp. 33. Notably, Patent Owner argues that the level of ordinary skill in the art includes experience specific to digital or virtual clothing and that Petitioner has omitted this critical aspect. Id. at 32. We need not define explicitly the level of ordinary skill in the art because Petitioner would fail to meet its evidentiary burden regardless of the definition of the level of skill adopted.” slip op. at 6

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,410,355

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.