- Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00252 · APJ John A Hudalla · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 8–23 obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024); Paper 8 (referral to panel after no discretionary denial briefing under the Interim Processes memorandum). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art (“POSA”) “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 16–17 (citing Ex. 1001 ¶¶ 78–82). Patent Owner contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 20–21 (citing Ex. 2001 § IV.C). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“obviousness contentions based on Ellis and Spivey rely expressly on the use of a “known webserver” to perform the “transmitting first instructions” limitations excerpted above. See Pet. 28–34. Yet Petitioner does not specify how such a webserver would be integrated with the other elements from Ellis and Spivey cited by Petitioner. At best, Petitioner provides a background section on the known use of webservers (see id. at 11 (citing Ex. 1001 ¶¶ 49–53, 127–134)), but this does not provide a rationale for integrating a webserver in the Ellis–Spivey combination. We also have considered Petitioner’s cited testimony from Dr. Wicker supporting this background section. The first cited portion, which is located at paragraphs 49–53 of Dr. Wicker’s declaration, supports the premises in the background section, but does not include a rationale for adding a webserver to the Ellis– Spivey combination. See Ex. 1001 ¶¶ 49–53. The second cited portion, which is located at paragraphs 127–134 of Dr. Wicker’s declaration, includes a rationale for modifying the Ellis–Spivey combination to include a webserver.3 See Ex. 1001 ¶¶ 127–134. But that rationale is completely 3 The cited rationale in Dr. Wicker’s declaration appears to be tailored to support Petitioner’s obviousness contentions in IPR2025-00251, where unaddressed in the Petition. We decline to assume that Petitioner adopts Dr. Wicker’s testimony about the rationale as its position, because that would amount to improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). See Patent Trial and Appeal Board Consolidated Trial Practice Guide at 35–36 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)) (stating that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00251 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of success, chiefly due to unsupported webserver teachings and motivation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Analysis We are not persuaded by Petitioner’s rationale for adding a facilitator- type webserver to the Ellis–Spivey combination based on “POSA’s Knowledge.” First, Petitioner’s combination of Spivey with Ellis is already allegedly based on improving latency issues via the incorporation of Spivey’s LDSD and MQSD in Ellis’s system. See Pet. 22–24. Petitioner touts that this modification would result in reduced latency to a time period “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. at 23 (citing Ex. 1017 ¶ 96). But the Petition does not establish whether this latency improvement would or could be maintained when adding a separate webserver, as it has proposed. And Dr. Rubin testifies that the inclusion of an additional webserver—an additional component—is likely to create latency insofar as it must receive, process, and/or handle data. Ex. 2001 ¶ 305. We are persuaded by Dr. Rubin’s testimony, and we find that adding a webserver to Petitioner’s existing Ellis– Spivey combination tends to undermine Petitioner’s foundational rationale for combining these references, which is the reduction of latency. See Pet. 23.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Third, we agree with Patent Owner (Prelim. Resp. 49) that Petitioner does not explain sufficiently why an ordinarily skilled artisan would have added a facilitator-type webserver to the Ellis–Spivey combination when neither reference teaches or suggests a webserver for facilitating communication between a client and a socket server. Dr. Wicker’s supporting testimony stresses that “webservers were well-known components in streaming systems that were useful for facilitating communication between client devices and socket servers, and client devices and media sources.” Ex. 1001 ¶¶ 128–132. But “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to provide any persuasive reason with a rational underpinning why an ordinarily skilled artisan would have been motivated to add a webserver to the existing Ellis–Spivey combination.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 8. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 34 (citing Ex. 1001 ¶ 163). Thus, Petitioner argues that a “first event socket corresponding to the first event information” is “a socket where information about one sporting event is provided to VCDs.” Id. Patent Owner states that “[e]xcept for the ‘socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 20–21. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution deniedPTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- Skill levelOther
“B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,287,591 - Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 10, 2025 · PGR2024-00049 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show the patent was eligible for PGR; the challenged claims were supported by the 2006 priority application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006. 2. Conclusion: PGR Eligibility For the foregoing reasons, and based on the record before us, we determine that Petitioner has not demonstrated that it is more likely than not that the ’202 patent has, or had, at least one claim having an effective filing date on or after March 16, 2013. Accordingly, we determine that the ’202 patent is entitled to the filing date of the ’634 application (October 18, 2006), and, thus, the ’202 patent is not eligible for post-grant review.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Accordingly, the ’202 patent consistently and repeatedly characterizes the invention as incorporating tobacco in some form and ties the stated benefits of the invention to the inclusion of tobacco. Moreover, the Specification is directed to smoking articles containing tobacco, all of the embodiments include tobacco, and “the present invention” is described as a smoking article, where the smoking article includes tobacco. Consequently, we determine that “smoking article” as it is used in the challenged claims is limited to devices that include tobacco. See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1361 (Fed. Cir. 2022) (finding claimed “lip” is limited to “extrudable plastic materials” where specification states that “the device of the present invention is constructed of extrudable plastic materials” and “emphasizes the benefits of using extrudable plastics and describes them as benefits of the invention as a whole”); Poly-Am., L.P. v. described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”); Phillips v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner’s argument is dependent on accepting Petitioner’s assertion that the claims include a smoking article that does not contain tobacco, which we have not done. Instead, as set forth above, we construe “smoking article” as being limited to devices that include tobacco. See § II.B.2, supra. Based on our construction of “smoking article” and the evidence of record in this proceeding, we determine that the challenged claims are supported by the specification of the ’202 patent, which is identical to the specification of all of the continuations in the chain leading back to the October 18, 2006 that the specification of the ’202 patent and every patent in its priority chain “have identical specifications”); Prelim. Resp. 13 (noting that Petitioner does not identify other limitations in the challenged claims “allegedly lacking support in the ’202 patent family’s applications dating back to U.S. App. No. 11/550,634, filed on October 18, 2006”). Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006.” slip op. at 17
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,925,202 - Directv, LLC v. Entropic Communications, LLCInstitution deniedPTAB · 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
NonePatents in suitUS 7,889,759 - Vusiongroup SA v. Hanshow Technology Co., Ltd.Institution deniedPTAB · Jan 14, 2025 · IPR2024-01045 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any of its four § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At best, Schwartz’s disclosure cited by Petitioner teaches aggregating product information obtained from different stores, but neither the Petition nor Dr. Wolfe explains sufficiently how aggregating product information would have suggested cross-correlating different product facing bounding boxes to one of ordinary skill in the art. See Pet. 35–37; Ex. 1003 ¶¶ 148–151. We are not persuaded that aggregating product information and cross-correlating different product facing bounding boxes would have been recognized as similar or comparable processes. Moreover, Petitioner does not even assert that one of ordinary skill in the art would have recognized that Schwartz cross-correlates one or more product facing bounding boxes and one or more other product facing bounding boxes as required by limitation [1.5]. Instead, Petitioner asserts only that one of ordinary skill in the art “would have recognized Schwartz . . . cross-correlates that product and affiliated shelf added). Furthermore, limitation [1.5] recites cross-correlating different product facing bounding boxes by matching shelf label content of the different product facing bounding boxes. But Petitioner does not explain adequately how the combination of Schwartz and Katircioglu satisfies this requirement. Pet. 35–37. Although Petitioner asserts that the combination discloses associating shelf label content with product facing bounding boxes (id. at 30–35), we are not directed to any disclosure in either Schwartz or Katircioglu that teaches or suggests matching the shelf label content of different product facing bounding boxes. For the above reasons, Petitioner fails to persuade us that the combination of Schwartz and Katircioglu discloses limitation [1.5]. Therefore, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claim 1 is unpatentable over the combination of Schwartz and Katircioglu.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) in November 2016 would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics, machine learning, artificial intelligence or automated object recognition methods and systems, or equivalent training and work experience in the field. Formal education can substitute for work experience and relevant work experience could substitute for formal education. Pet. 8–9 (citing Ex. 1003 ¶ 29). Patent Owner indicates it agrees with Petitioner’s definition of a person having ordinary skill in the art. Prelim. Resp. 4–5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o formal claim constructions are necessary ‘to resolve the controversy.’” Pet. 9 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Petitioner adds that there is a rebuttable presumption that § 112(f) does not apply because the challenged claims do not recite “means.” Id. In the event the presumption is overcome with respect to the claim terms “processor” and “product classifier,” Petitioner identifies the disclosure describing the corresponding structure for these terms. Id. at 9–10. Patent Owner contends that claim construction is not necessary and the claims should be given their plain and ordinary meaning. Prelim. Resp. 5. Regarding the claim terms “processor” and “product classifier,” Patent Owner argues that Petitioner has not advanced any argument to rebut the presumption that § 112(f) does not apply. Id. at 6. any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,087,272 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. 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.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01009 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Schonfeld’s testimony cited by Petitioner does not rectify this problem. See Ex. 1003 ¶ 263. Dr. Schonfeld does not actually state that the well as the number of pixel differences, as “variables” that “were known to control the frequency response of the filter, or, in other words, how much particular frequencies would be filtered,” as allegedly shown by Gonzalez.9 Id. (citing Ex. 1020, 153, 273). But Dr. Schonfeld does not explain adequately how the cited portions of Gonzalez disclose that the coefficients were known to control the frequency response in a deblocking filter. Indeed, the cited portions of Gonzalez do not appear to discuss determining offsets for deblocking filtering or the coefficients used in an equation for determining offset. See Ex. 1020, 153, 273. Accordingly, this testimony is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. 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.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,142,659 - Toyota Motor Corp. / Kia Copr. v. Emerging Automotive LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 10,407,026 - PTAB · Nov 15, 2024 · IPR2024-00851 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all claims 1–7 because the Petition did not show a reasonable likelihood of prevailing on any challenged 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 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–7. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“claim element creates a rebuttable presumption that § 112[(f)] applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112[(f)] does not apply.”12 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part) (internal citations omitted). Because the “sealing means” limitation includes the word “means,” we start from the rebuttable presumption that § 112(f) applies. Petitioner does not address the applicability of § 112(f) and does not rebut the presumption. We continue the analysis, however, and, for the reasons below, we agree with Patent Owner that § 112(f) applies to the “sealing means” limitation.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “fits behind” In wherein clause (vi), claim 1 recites: “the outwardly pointing outer flange of the first connecting device fits behind the inner flange of the nut unit.” Ex. 1001, 9:4–5 (emphasis added). In the Preliminary Response, Patent Owner discusses the term “fits behind” in this claim language. See Prelim. Resp. 41–45. We need not construe explicitly this language or any other claim terms because doing so would not change the outcome of the analysis. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,851,030
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.