- Caption Health, Inc v. University Of British ColumbiaInstitution deniedPTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,129,591 - Apple Inc. v. Ferid AllaniInstitution deniedPTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,271,877 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00814 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim over the asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103(a); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness determination requires finding a reason to combine accompanied by a reasonable expectation of achieving what is claimed in the challenged patent. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 419–20.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“tripping” as “any motion of a tooth in any direction other than directly toward the desired final position.” Ex. 1004, 4:12–13. Chishti-511 teaches minimizing round-tripping (“teeth are moved in the quickest fashion with the least amount of round-tripping”), but acknowledges that “[r]ound-tripping is sometimes necessary to allow teeth to move past each other.” Id. at 4:9–15. In an attempt to counter Patent Owner’s teaching away arguments, Petitioner relies heavily on Chishti-511’s statement that “[r]ound[-]tripping is sometimes necessary.” See Pet. 29–30; see also Ex. 1003 ¶ 83 (Dr. Yadav relying on Chishti-511). This reliance is unavailing, because as noted above, Chishti-511 defines “round-tripping” more broadly than is claimed here. Indeed, in the ’444 IPR, the Board stated that “the ‘round tripping’ described in Chishti ’511 is something different than the ‘round tripping’ required by the ’444 patent.”10 Ex. 1008, 16. Despite being aware of this prior finding 10 In the ’444 IPR, the Board employed the same construction of “round-tripping” that we use here. Compare Ex. 1008, 6, with Section II.C supra. (see Pet. 6), Petitioner here fails to address the difference between Chishti- 511’s round-tripping and the claimed round-tripping. That is, Petitioner places great weight on Chishti-511’s statement that “round-tripping is sometimes necessary,” but has not established that Chishti-511 contemplates round-tripping as claimed, as opposed to some other, different movement pattern encompassed by Chishti-511’s broader statement about round-tripping.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“discussion of “need[ing] collision-free treatment paths,” skilled artisans would have turned to Becker. Pet. 23–24 (citing Ex. 1004, 4:15–22). But on this record, and especially in view of the teachings away from round-tripping, Petitioner does not demonstrate a reasonable likelihood that a skilled artisan would have combined Becker’s movement pattern with the Chishti systems and Sachdeva. In particular, the Petition and supporting materials lack sufficient argument and evidence for us to conclude that a person of ordinary skill in the art would have had reason to apply Becker’s movement pattern in the context of an aligner treatment. Becker is a textbook relating to the orthodontic treatment of impacted teeth. Ex. 1006, 1 (Title). Patent Owner correctly states that “Becker is a different orthodontic treatment modality compared to the Chishti references,” using “braces and numerous brackets, wires, and rubber bands, with the wire-and-bracket systems being attached directly and permanently to the teeth.” Prelim. Resp. 21–22; see also supra Section II.D.4. “Becker involves traditional orthodontic practice: manual, by-eye adjustment of its archwires, elastic thread, and palatal wires by a treating orthodontist in repeated office visits.” Prelim. Resp. 22. Chishti-511, in contrast, uses “treatment planning software” to “pre-stag[e] a series of tooth positions from which a sequence of appliances can be manufactured.” Id. On this record, we agree with Patent Owner that “Becker at best shows that round-tripping was an option in limited circumstances involving wire-and-bracket treatment.” See Prelim. Resp. 3. Petitioner does not direct us to any persuasive evidence that using aligners to effect Becker’s tooth transposition “would be appropriate or even possible.” Id. at 22. As Patent Owner correctly notes, Petitioner does not point to any teaching in Becker regarding aligner treatment or corresponding treatment planning software. Id. at 23. Nor are we directed to any portions of Chishti-511, Chishti-876, or Sachdeva that mention using aligners to transpose teeth. These omissions are important because “[i]n contrast to treatment with braces, in which wires are manually adjusted by the orthodontist to move teeth reactively, aligner treatment involves treatment planning in which a detailed path of teeth is calculated in advance.” Id. at 4. Given these differences, Petitioner has not persuasively explained why Becker’s tooth movement pattern and mechanism would have been of interest to a skilled artisan who was” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the August 30, 2006 claimed priority date would have been part of an interdisciplinary team. This team would have included a member with an advanced degree related to dentistry (e.g., BDS, MDS, DDS, DMD) with experience in orthodontics, including 1–3 years of orthodontic training or equivalent experience, and experience using clear aligners. The team may have also included members with a degree in a technical area related to software, graphics, computers, or a related discipline. This technical team member would have had 1–3 years of software development experience. For all team members, more education could substitute for experience and vice versa. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–24; Ex. 1017 ¶¶ 23–25; Ex. 1029; Ex. 1030). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,456,217 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00815 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution because ClearCorrect did not show a reasonable likelihood that claims 1–24 would have been obvious over Chishti-511, Chishti-876, Sachdeva, and Becker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“3. Analysis In view of the arguments and cited evidence, we find on this record that Petitioner has not demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine Becker’s round-tripping with the teachings of the Chishti patents and Sachdeva.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party indicates that any other claim term requires express construction. Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no other claim term requires construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITA
“Court for the Western District of Texas (see supra Section I.B), they jointly adopted the definition of “round-tripping” set forth in the ’879 patent Specification. Pet. 9; Prelim. Resp. 8; Ex. 1013, 8. The ’879 patent Specification defines “round-tripping” as moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth. See Ex. 1001, 13:9–13. We adopt this agreed-upon construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,524,879 - Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution deniedPTAB · 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 PhillipsPatents in suitUS 8,433,296 - Nuvei Technologies, Inc. v. Autoscribe CorporationInstitution deniedPTAB · Jun 12, 2025 · IPR2025-00089 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Nuvei did not show a reasonable likelihood that claims 1–27 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“providing” negative limitation of independent claim 1, and the similar negative limitations of independent claims 8, 15, 23, and 25. Accordingly, Nuvei has not shown a reasonable likelihood that it would prevail on its assertions that the subject matter of independent claims 1, 8, 15, 23, and 25 would have been obvious over the combined teachings of Stringfellow and Kloster.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or comparable field of study, and (2) at least two years’ experience working with and programming networked computer systems.” Pet. 9 (citing Ex. 1005 ¶ 36). Nuvei also argues that “[a]dditional education might substitute for some experience, and vice versa.” Id. In the Preliminary Response, Autoscribe does not address the level of skill in the art. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Nuvei’s proposed assessment of the level of ordinary skill in the art because it is consistent with both the ’621 patent and the asserted prior art, and it is supported by the testimony of Dr. Almeroth.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The supporting testimony from Nuvei’s declarant, Dr. Almeroth, on these issues fare no better. Dr. Almeroth provides no additional explanation beyond the arguments and evidence presented in the Petition to support Nuvei’s assertion that Kloster does not provide the payment data token to the payer during its token retrieval functions. See Ex. 1005 ¶ 100.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“argument that Kloster does not teach the “without providing” negative limitation required by each independent claim. Nuvei appears to contend that Kloster teaches this limitation in two different ways—namely, through either a “call back URL” or “API calls by the merchant.” Pet. 50–51 (emphasis omitted) (quoting Ex. 1008 ¶¶ 15, 23) (citing Ex. 1008 ¶ 24). We address Nuvei’s contentions in turn.” slip op. at 21
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,620,621 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 7,557,788 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution deniedPTAB · 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 PhillipsPatents in suitUS 10,499,168 - Lenovo (United States) Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Feb 18, 2025 · IPR2024-01226 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Lenovo had not shown a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“identifies and refers to a valid region of the integrated circuit memory device as having a three-dimensional boundary delimited by phase ranges in command/address signals, data signals, and sampling signals. Nowhere does the ’835 patent specification indicate a valid region of the integrated circuit device as a whole can be represented by values for less than three parameters x, y, and z, all together, e.g., the command signals, the data signals, and the sampling signals. Also, the ’835 patent describes that the purpose of determining the boundaries of a valid region is to configure an optimal operating point for the integrated circuit device. Ex. 1001, 5:48–51. We have also considered other language in the claims. Each of independent claims 1 and 7 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operation range.” Ex. 1001, 6:56–7:4, 7:18–34. Each of independent claims 12, 20, and 23 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operating range.” Ex. 1001, 7:46–60, 8:28–44, 8:62–10:4. Based on the foregoing, the specification informs us that “valid operation range” is a three-dimensional range. We recognize that the specification does not expressly exclude a two-dimensional range or multiple two-dimensional ranges from being a “valid operation range” of the integrated circuit device. However, that is why we construe the claims to determine what, if anything, may be required despite a lack of express recitation in the claims.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Baker, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Pet. 4 (citing Ex. 1002 ¶¶ 31–35). Patent Owner’s expert, Mr. Lee, testifies: “I agree with Petitioner that [Petitioner’s statement of the level of ordinary skill] would be the minimum qualifications for a POSITA.” Ex. 2001 ¶ 35. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, i.e., that a POSITA “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Ex. 1002 ¶ 34. The stated level is supported by the testimony of Dr. Baker and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,646,835 - PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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) (2024).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,664,059
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.