• Azurity Pharmaceuticals, Inc. v. Exelixis Inc.Institution denied
  PTAB · Jun 4, 2025 · IPR2025-00210 · APJ Jeffrey N Fredman · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving claims 1–3 unpatentable.

  RulingsInstitution decision

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

    “Accordingly, we find that on the current record Petitioner has not shown that the combination of Brown, Kubo, and Remington would inherently result in less than 200 ppm impurity and Petitioner has not shown that it has a reasonable likelihood that it would prevail on the obviousness ground.” slip op. at 29

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “Here, there is no dispute that the ’349 patent and Wilson, which issued from a patent application from which priority was claimed for the ’349 patent, share the identical disclosure of a pharmaceutical composition comprising Compound IA or IB; one or more fillers; one or more disintegrants; one or more glidants; and one or more lubricants. In this embodiment, the filler comprises microcrystalline cellulose. In this embodiment, the disintegrant comprises croscarmellose sodium. In this embodiment, the disintegrant comprises croscarmellose sodium and sodium starch glycolate. In this embodiment, the glidant comprises fumed silica. In this embodiment, the lubricant comprises stearic acid. Ex. 1001, 21:1–12; Ex. 1002, 20:51–62. There is express ipsis verbis disclosure of the elements recited in claim 1 of the ’349 patent.” slip op. at 13

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

    “1. Reason to reduce contaminant levels We agree with Patent Owner that Petitioner identifies no teaching in the prior art providing any reason to reduce levels of 6,7-dimethoxy-quinoline-4-ol specifically. And while Brown does teach a desire to form “substantially pure” compounds, Brown focuses on “at least about 90 wt.%” of the compound, then lists specifically “about 90, about 91, about 92, about 93, about 94, about 95, about 96, about 97, about 98, about 99 and about 100% wt. %.” Ex. 1003 ¶ 97. This permits a range of concentration for contaminants from about 0 to 10%.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “to modify Brown’s process with Kubo to eliminate the added step. See, e.g., Id. ¶ 73. But even with that combination, Dr. Dichtel states only that a “POSA would have expected there to be a decrease in the amount of 6,7- dimethoxy-quinoline-4-ol at the end of cabozantinib (L)-malate’s synthesis that was attributable to hydrolytic degradation of the 4- (nitrophenoxy)quinoline intermediate by avoiding its use in the synthesis.” Id. ¶ 78. That is not, however, the standard for inherency. It must be the necessary result, not a possible expected result. The Federal Circuit in Par explained that: Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” slip op. at 28

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,298,349
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution denied
  PTAB · Jun 3, 2025 · IPR2025-00252 · APJ John A Hudalla · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 8–23 obvious over any asserted combination.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024); Paper 8 (referral to panel after no discretionary denial briefing under the Interim Processes memorandum). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “ordinary skill in the art (“POSA”) “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 16–17 (citing Ex. 1001 ¶¶ 78–82). Patent Owner contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 20–21 (citing Ex. 2001 § IV.C). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10

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

    “For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “obviousness contentions based on Ellis and Spivey rely expressly on the use of a “known webserver” to perform the “transmitting first instructions” limitations excerpted above. See Pet. 28–34. Yet Petitioner does not specify how such a webserver would be integrated with the other elements from Ellis and Spivey cited by Petitioner. At best, Petitioner provides a background section on the known use of webservers (see id. at 11 (citing Ex. 1001 ¶¶ 49–53, 127–134)), but this does not provide a rationale for integrating a webserver in the Ellis–Spivey combination. We also have considered Petitioner’s cited testimony from Dr. Wicker supporting this background section. The first cited portion, which is located at paragraphs 49–53 of Dr. Wicker’s declaration, supports the premises in the background section, but does not include a rationale for adding a webserver to the Ellis– Spivey combination. See Ex. 1001 ¶¶ 49–53. The second cited portion, which is located at paragraphs 127–134 of Dr. Wicker’s declaration, includes a rationale for modifying the Ellis–Spivey combination to include a webserver.3 See Ex. 1001 ¶¶ 127–134. But that rationale is completely 3 The cited rationale in Dr. Wicker’s declaration appears to be tailored to support Petitioner’s obviousness contentions in IPR2025-00251, where unaddressed in the Petition. We decline to assume that Petitioner adopts Dr. Wicker’s testimony about the rationale as its position, because that would amount to improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). See Patent Trial and Appeal Board Consolidated Trial Practice Guide at 35–36 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)) (stating that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”).” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,871,088
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution denied
  PTAB · Jun 3, 2025 · IPR2025-00251 · APJ John A Hudalla · IPR · Institution

  The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of success, chiefly due to unsupported webserver teachings and motivation.

  RulingsInstitution decision

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

    “c. Analysis We are not persuaded by Petitioner’s rationale for adding a facilitator- type webserver to the Ellis–Spivey combination based on “POSA’s Knowledge.” First, Petitioner’s combination of Spivey with Ellis is already allegedly based on improving latency issues via the incorporation of Spivey’s LDSD and MQSD in Ellis’s system. See Pet. 22–24. Petitioner touts that this modification would result in reduced latency to a time period “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. at 23 (citing Ex. 1017 ¶ 96). But the Petition does not establish whether this latency improvement would or could be maintained when adding a separate webserver, as it has proposed. And Dr. Rubin testifies that the inclusion of an additional webserver—an additional component—is likely to create latency insofar as it must receive, process, and/or handle data. Ex. 2001 ¶ 305. We are persuaded by Dr. Rubin’s testimony, and we find that adding a webserver to Petitioner’s existing Ellis– Spivey combination tends to undermine Petitioner’s foundational rationale for combining these references, which is the reduction of latency. See Pet. 23.” slip op. at 22

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

    “Third, we agree with Patent Owner (Prelim. Resp. 49) that Petitioner does not explain sufficiently why an ordinarily skilled artisan would have added a facilitator-type webserver to the Ellis–Spivey combination when neither reference teaches or suggests a webserver for facilitating communication between a client and a socket server. Dr. Wicker’s supporting testimony stresses that “webservers were well-known components in streaming systems that were useful for facilitating communication between client devices and socket servers, and client devices and media sources.” Ex. 1001 ¶¶ 128–132. But “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to provide any persuasive reason with a rational underpinning why an ordinarily skilled artisan would have been motivated to add a webserver to the existing Ellis–Spivey combination.” slip op. at 24

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11

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

    “Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 8. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 34 (citing Ex. 1001 ¶ 163). Thus, Petitioner argues that a “first event socket corresponding to the first event information” is “a socket where information about one sporting event is provided to VCDs.” Id. Patent Owner states that “[e]xcept for the ‘socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 20–21. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,871,088
• Precision Cancer Technologies Inc. v. Oncoustics Inc.Institution denied
  PTAB · Jun 3, 2025 · IPR2025-00242 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has not established a reasonable likelihood of prevailing on its assertion that any of the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’330 patent.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “area” in the challenged claims was added by amendment. Ex. 1004, 181.8 In making the amendment, Applicant stated that the language added by amendment was intended to distinguish the pending claims over Uniyal,9 which Applicant characterized as disclosing a “time series” of ultrasound data. Uniyal relies on a time series of ultrasound data. In order to distinguish Uniyal, the claims have been amended to recite a single static set of ultrasound RF data in a single frame of the tissue area. As explained in the Interview, the claims rely on a signle [sic, single] “snapshot” frame of the ultrasound RF data rather than a time series or [sic, of] RF data as disclosed in Uniyal. Applicant respectfully submits the amended claims are allowable over all of the cited reference. Id. at 186–187; see also id. at 185 (Applicant’s remarks accompanying amendment, stating: “As explained in the Interview, a static set of raw ultrasound RF signals is collected for an area. This is a snapshot of the tissue area as opposed to taking a time series of RF signals”), 191 (Examiner interview summary, stating: “Inventor noted that Uniyal uses a time series US [ultrasound] data whereas the invention uses images that are non-coherent in time (e.g., a static frame)”).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “transducer, Petitioner points to Hope-Simpson’s teaching that its neural network may be “capable of ‘analyzing patterns using a with a [sic] multi-dimensional (2-or more dimensional) data set, which may also be thought of as localized data sets.’” Id. at 22 (quoting Ex. 1005 ¶ 6; alteration by Petitioner). Petitioner then asserts that “[t]he localized data sets described by Hope-Simpson are equivalent to the claimed ‘single set of raw ultrasound [RF] data forming a single frame of a tissue area.” Pet. 22 (citing Ex. 1002 ¶ 86 (testimony of Dr. Papanicolau)). But Petitioner does not explain why Hope-Simpson’s “localized data sets” equate with a single frame of a tissue area rather than, for example, a time series of frames taken at the same location. Pet. 22. Petitioner cites the testimony of Dr. Papanicolau, but Dr. Papanicolau’s testimony lacks both technical reasoning and evidentiary support; it simply mirrors the statement in Petition. Ex. 1002 ¶ 86. For this reason, we give Dr. Papanicolau’s ipse dixit testimony little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24 ,2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 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.”). Accordingly, to the extent this is the data that Hope Simpson provides to the processor, on this record, Petitioner has not sufficiently established that it constitutes a “single static set” of raw RF ultrasound data “forming a single frame.”” slip op. at 15

  Claim constructioncites KSR · Graham
  Patents in suitUS 11,602,330
• Manitowoc Foodservice Companies, LLC v. Gate CFV Solutions, IncInstitution denied
  PTAB · Apr 18, 2025 · DER2023-00006 · APJ John E Schneider · DER · Institution

  The Board denied institution of a derivation proceeding because Manitowoc did not show that all elements of amended claim 1 were conceived and communicated to Gate CFV Solutions.

  RulingsInstitution decision

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

    “invention and communicated that invention to Respondent prior to July 22, 2021, the filing date of Respondent’s ’693 application. See Pet. 6–10. Of great importance here, however, are the requirements noted above, that Petitioner must show: (1) that Petitioner has at least one claim that is the same or substantially the same as Respondent’s claimed invention; (2) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to Respondent; and (3) that the challenged claims are drawn to the same or substantially the same invention as the invention Petitioner disclosed to Respondent. See 37 C.F.R. § 42.405(a)(2), 37 C.F.R. § 42.405(b)(3). For the reasons discussed below, Petitioner has not made the requisite showing in the Petition with respect to at least item (2).” slip op. at 9

  None
• Directv, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Jan 22, 2025 · IPR2024-01061 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of prevailing, and denied joinder to the non-instituted DISH Network IPR.

  RulingsInstitution decision

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

    “For the same reasons discussed in our Decision Denying Institution of the DISH Network IPR, Paper 14, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Joinder is only permissible, however, when the inter partes review Petitioner seeks to join has been instituted. 35 U.S.C. § 315(c). As the DISH Network IPR has not been instituted, we do not grant Petitioner’s Motion for Joinder.” slip op. at 3

  None
  Patents in suitUS 7,889,759
• Toyota Motor Corp. / Kia Copr. v. Emerging Automotive LLCInstitution denied
  PTAB · Nov 21, 2024 · IPR2024-00785 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Zaid disclosed or taught the claimed vehicle-unlocking request, for claims 1–7, 10–15, and 18–20.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24

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

    “Additionally, Petitioner specifically argues that Zaid discloses this limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124). Thus, after review of the arguments and evidence, we find that Petitioner has not provided sufficient explanation and supporting evidence that Zaid discloses or teaches “a request from the mobile device for unlocking of the vehicle” as required by limitation [1e]. Accordingly, based on the current record, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that independent claim 1 is anticipated by or rendered obvious in view of Zaid.” slip op. at 25

  • Expert testimonyDecided for patent owner

    “limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124).” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,407,026
• Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution denied
  PTAB · Nov 12, 2024 · IPR2024-00922 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were obvious over Larson and Cai.

  RulingsInstitution decision

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

    “For the reasons given, we determine Petitioner has not has not shown that the asserted prior art teaches or suggests limitation [1.7]. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Larson and Cai. a) Conclusion—Claim 1 For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious.” slip op. at 20

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

    “comprise the background knowledge art, with very little substantive explanation. In our view, this string-citation, without more substantive explanation, does not satisfy Petitioner’s obligation to explain why a person of ordinary skill in the art would have modified Larson based on the background knowledge in the art to account for limitation 1.7.” slip op. at 14

  • Skill levelSkill level petitioner adoptedOther

    “For purposes of this proceeding, Patent Owner “agrees to use Petitioner’s definition” for a person of ordinary skill in the art. Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’823 patent specification and the prior art.” slip op. at 8

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

    “Petitioner states “each claim term in the Challenged Claims” should “be given its plain and ordinary meaning,” and “that no specific construction of any claim term is required.” Pet. 17–18. Patent Owner “agrees with Petitioner that, for this proceeding and the grounds presented by Petitioner, no claim term requires construction.” Prelim. Resp. 12. For purposes of this Decision, no claim terms require express construction.” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,446,823
• Cox Communications, Inc. v. Entropic Communications, LLCInstitution denied
  PTAB · Sep 25, 2024 · IPR2024-00579 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Cox did not show a reasonable likelihood that claims 18 and 19 were unpatentable under either asserted obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, 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.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “The proposed level of the ordinarily skilled artisan in the instant proceeding is similar to that adopted in the ’446 IPR proceeding. Here, Petitioner has not argued that the already-adopted level is wrong or explained why any differences in proposed skill levels impact the outcome of this proceeding. For purposes of this Decision, we maintain our determination to adopt the proposed level of skill in IPR2024-00446 as that skill level is reasonable and consistent with the ’775 patent specification and the prior art. Our analysis and conclusions herein, however, would be the same using Petitioner’s proposed level of the ordinarily skilled artisan in the instant proceeding.” slip op. at 10

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

    “disclosure. In particular, Schain discloses that Figure 3, relied on by Petitioner, “illustrates the logical architecture of a dual bridge” of broadband gateway 135. Ex. 1005 ¶ 45 (emphasis added). Schain also discloses that Figure 3’s “logical architecture features two bridges, one for the broadband modem portion (a cable bridge 315) and one for the residential gateway portion (a local bridge 345) of the broadband gateway 135.” Id. (emphasis added). Schain’s disclosure is of a logical separation, that is a separation in software. See, e.g., id. at 45. Claim 18, however, recites “a data networking engine implemented in a first circuit that includes at least one processor,” “a cable modem engine implemented in a second circuit that includes at least one processor,” and limitation 18d, which is “the second circuit being separate from the first circuit.” Petitioner has not shown that Schain’s disclosure of its logical architecture teaches or suggests “the second circuit being separate from the first circuit” (emphasis added). Petitioner also relies on Schain’s disclosure of “a separate driver layer” that is “[b]eneath each bridge.” Pet. 30 (citing Ex. 1005 ¶ 46; Ex. 1003 ¶ 76). Schain discloses that “[t]he driver layer typically includes both hardware and software portions.” Ex. 1005 ¶ 31. Schain discloses that “[t]he hardware portion of the drive layer” is “the physical connection, such as Ethernet connections, USB connections, etc.” Id. Schain does not describe that the hardware portion of the driver layer includes a processor.” slip op. at 21

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

    “engine’ is not shown as part of its line card 731.” Prelim. Resp. 51. Patent Owner argues “[t]o bridge this gap,” Petitioner “offers only a conclusory assertion that ‘it would be a trivial modification to have the DOCSIS processor 855 of line card 731 perform this function.’” Id. at 52 (citing Ex. 1003 ¶ 200). Patent Owner argues “missing limitations . . . simply cannot be added in an obviousness analysis based on a bare assertion of trivial[ity].” Id. Patent Owner argues “it is well-settled that such missing limitations cannot be supplied by conclusory statements about ‘basic knowledge’ or ‘common sense.’” Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1362–63 (Fed. Cir. 2016); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); DSS Tech. Mgmt. v. Apple Inc., 885 F.3d 1367, 1374–75 (Fed. Cir. 2018). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (2019), (“Consolidated Practice Guide” or “CTPG”) 36.3 Limitation 18i recites “the DOCSIS MAC processor configured to process downstream PDU packets and forward the processed packets directly to the data networking engine without the involvement of the DOCSIS controller in order to boost downstream throughput.” Petitioner has not shown that any asserted prior art reference teaches or suggests limitation 18i. Petitioner may not rely on the testimony of Dr. Martin to bridge this gap. After consideration of the arguments and the evidence of record, we determine that Petitioner has not shown sufficiently that limitation 18i is 3 The CTPG is at https://www.uspto.gov/TrialPracticeGuideConsolidated. taught or suggested by Perlman or Crocker and Petitioner does not rely on Fox for this limitation. Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claim 18 is unpatentable under 35 U.S.C. § 103 as obvious over Perlman, Crocker, and Fox.” slip op. at 26

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,223,775
• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution denied
  PTAB · Sep 9, 2024 · IPR2024-00445 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

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

    “IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims. And as a result, based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’682 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 24

  • BurdenNot shown unpatentable

    “testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24

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

    “After studying Cioffi, in view of Petitioner’s contentions and the testimony of declarant Dr. Kiaei, we find Patent Owner’s criticism to have merit. The evidence from Cioffi, which Petitioner and Dr. Kiaei reference, neither discloses or suggests creating “a composite SNR-related metric” for a group of cable modems or channels. Moreover, Petitioner has failed to carry its burden of showing with particularity why a skilled artisan view Cioffi as disclosing or suggest generating a composite SNR-related metric based at least in part on a worst-case SNR profile of the SNR related metrics. More specifically, we agree with Patent Owner that Petitioner’s analysis appears to gloss over the details of Cioffi and fails to clearly articulate what of Cioffi allegedly meets the requirements of Limitations [1D] and [10D], which ultimately diminishes the persuasiveness Petitioner’s contention. Therefore, we are not persuaded Petitioner has demonstrated sufficiently that Cioffi fills the gap in Thibeault and discloses or suggests Limitations [1D] and [10D] of the challenged independent claims. IV. CONCLUSION For the above reasons, we are not persuaded that Petitioner has shown with sufficient particularity why either Saey, Gross, or Cioffi disclose or suggest “generating, by said CMTS for each one of said plurality of service groups, a composite SNR-related metric based at least in part on a worst- case SNR profile of said SNR related metrics corresponding to said one of said plurality of service groups.” This failing undermines Petitioner’s obviousness contentions for both challenged independent claims under all of the alleged grounds. The same deficiency extends through to all of the grounds challenging the patentability of the dependent claims.” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “Pet. 17 (citing Ex. 1102 ¶¶ 38–43). Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’682 patent specification and the prior art.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,135,682

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.