- 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 - PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. Under 35 U.S.C. § 314(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.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. 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))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - Giesecke+devrient GmbH v. Lumenco, LLCInstitution deniedPTAB · Nov 25, 2024 · IPR2024-00837 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–7, and 9–13 were obvious over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition, we determine that Petitioner has not satisfied this threshold requirement, and therefore we do not institute inter partes review of claims 1, 3–7, and 9–13 of the ’691 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s reading of limitation [1d]. This limitation requires that each set of micro mirrors has a differing cone angle offset. A claim requiring “each” of an item to have a particular structure requires all instances of the item to have that structure. See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (claim reciting that “each wire leg” have an offset is not satisfied by prior-art device in which not all of its wire legs have an offset); cf. Micron Tech., Inc. v. U.S., 243 F.3d 1301, 1308 (Fed. Cir. 2001) (“The use of the words ‘each’ and ‘any’ to modify ‘employee . . . leaves no doubt as to the Congressional intention to include all employees within the scope of the [Fair Labor Standards] Act unless specifically excluded.”) (quoting U.S. v. Rosenwasser, 323 U.S. 360, 362–63 (1945)); ResQNet.com v. Lansa, Inc., 346 F.3d 1374, 1379 (Fed. Cir. 2003) (excerpt in specification using words “each field” and “fields” refers to all, not just some, fields). Thus, for each set of micro mirrors providing the pixels for each image to have a “differing cone angle offset,” the cone angle offsets of all the sets of micro mirrors must differ from each other. Consequently, as Patent Owner states (Prelim. Resp. 12), a set of micromirrors producing a pixel for a first image must have a cone angle offset that is different from the other sets of micromirrors producing pixels for that image, and also different from the sets of micromirrors producing pixels for any other image. Petitioner has not made us aware of anything in the Specification that suggests otherwise. We are not persuaded that Fuhse262 teaches limitation [1d] under this interpretation. Petitioner has not identified, and we are unable to find, any teaching in Fuhse262 that each set of micro mirrors providing the pixels for each of the differing ones of the images has a differing cone angle offset from those of the other sets of micro mirrors. Petitioner asserts instead that “a POSITA would understand that there is a differing cone angle offset for each image because the surface normal of each image, which dictate the cone of reflected rays and cone axis, are required to be different.” Pet. 41. But this assertion suggests, at most, that the sets of micro mirrors that create pixels for a first image have different cone angle offsets than the sets of micro mirrors that create pixels for a second image; Petitioner does not appear to be asserting that, e.g., all the sets of micro mirrors creating pixels for the first image are also different from each other, as limitation [1d] requires. Because we are not persuaded that Fuhse262 teaches limitation [1d], we are not persuaded that Petitioner has a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Fuhse262 and Fuhse925.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had a minimum of an undergraduate degree in electrical engineering, mechanical engineering, or physics and at least 2 years of experience in micro-optic based security features.” Pet. 14 (citing Ex. 1003 ¶¶ 12–13). Patent Owner responds that one of ordinary skill in the art “would have had an undergraduate degree in electrical engineering, mechanical engineering, physics, or a similar field and at least 2 years of experience in micro-optic based security features.” Prelim. Resp. 10. We do not discern a meaningful difference between the parties’ positions, and do not believe that our decision would differ under either definition. Nonetheless, at this stage of the proceeding, we adopt Petitioner’s definition. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that no terms require construction. Pet. 15; Prelim. Resp. 10. We also do not see the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,317,691 - 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 - Cisco Systems, Inc. v. Video Solutions Pte. Ltd.Institution deniedPTAB · 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 · GrahamPatents in suitUS 8,446,823 - Cox Communications, Inc. v. Entropic Communications, LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 8,223,775 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · 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 · GrahamPatents in suitUS 10,135,682 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Sep 6, 2024 · IPR2024-00444 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Saey or Gross taught the claimed composite SNR metric for a service group of cable modems.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A. Legal Standard Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (a skilled artisan) would have had a degree in computer or electrical engineering, computer science, information systems, or a similar discipline, along with at least three-to-four years of experience with the design and/or implementation of network-based content delivery systems, such as video-on-demand cable systems and Internet video streaming. Additional education may substitute for professional experience, and significant work experience may substitute for formal education. Pet. 10 (citing Ex. 1002 ¶¶ 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning.” Pet. 11. Patent Owner does not suggest otherwise. See generally Prelim. Resp. For the purposes of this Decision, we determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“D. Petitioner Has Not Established Sufficiently That the Prior Art Discloses or Suggests Each and Every Limitation Recited by Independent Claims 1 and 10 Limitations [1D] and [10D] of challenged independent claims 1 and 10 recite “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.” Ex. 1001, 8:10–15 (Limitation [1D]), 9:22–26 (Limitation [10D]). And each ground in this Petition, directly or indirectly, depends on the sufficiency of Petitioner’s contention that either Saey or Gross disclose or suggest that limitation. See Pet. 19–23, 28–31, 52–54, 57–59, 75. After studying the submissions of both parties and the evidence of record, however, we determine there is insufficient support for that contention to satisfy Petitioner’s burden for instituting inter partes review. And because this deficiency is dispositive of the Petition, we focus our discussion below accordingly, after we first provide an overview of Saey and Gross.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,135,682 - Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19
- Parallel petitionsNot reached
“Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,413 - Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00590 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1–20 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 5–20 are unpatentable over Smith and Seger. 2. Grounds 2 and 3 — Smith and Seger in view of Yago and Smith and Seger in view of Kurani-274 Claim 3 depends from claim 1, and claim 4 depends from claim 3. We determine that Petitioner has not met its burden to show a reasonable likelihood that claims 3 and 4 would have been obvious over the relied upon art. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. Claim element 2 requires the first intermediary server to add the enriched data file into the distributed ledger blockchain. Smith, however, discloses business computer 30 sending the ACH transaction detail record and the corresponding transaction data files (i.e., the enriched data record) to TPPP 70 and, then, TPPP 70 adding the ACH transaction detail record and the corresponding transaction data files to TPPP 70’s database. Pet. 26 (citing Ex. 1004 ¶¶ 41, 53). “The [TPPP] 70 stores the transaction key, the ACH transaction detail record and the corresponding transaction data files in a database on a computer for the [TPPP] 70.” Ex. 1004 ¶ 41. Smith does not disclose business computer 30 adding the ACH transaction detail record and the corresponding transaction data files directly into TPPP 70’s database. Smith, thus, must not only be modified to replace TPPP 70’s database with a distributed ledger blockchain but also to have business computer 30 or multiple business computers 30 directly add the ACH transaction detail record and the corresponding transaction data files into the distributed ledger blockchain. Petitioner does not adequately explain why a POSITA would additionally modify Smith’s method so that business computer 30 adds the ACH transaction detail record and the corresponding transaction data files directly to a distributed ledger blockchain. See Pet. 21–26. Likewise, Petitioner’s declarant Dr. Shen fails to provide any adequate explanation to why the proposed combination of Smith and Seger would have such a result. See Ex. 1003 ¶¶ 81–87. In any event, we agree with Patent Owner that a POSITA would not be motivated to make such a modification. Smith’s TPPP 70 would service multiple business computers 30 from distinct entities (Ex. 1004 ¶ 35; Ex. 2001 ¶ 48) and each would have access to the distributed ledger block chain (Ex. 2001 ¶¶ 48–49). Petitioner equates the claimed enriched data record to Smith’s “ACH detailed record for the ACH transaction and its corresponding transaction data file, individually and together.” Pet. 20. Smith discloses that the ACH detailed record and transaction data file includes sensitive information, such as a signature of the consumer 50 for the ACH authorization, a copy of the driver’s license for the consumer 50, a copy of the Social Security card for the consumer 50, and a copy of a license for business 30. Ex. 1004 ¶ 51; see also Pet. 17; Ex. 2001 ¶¶ 53–54. Smith’s TPPP 70, thus, maintains the data in a database that it completely controls and modifying Smith to include a distributed ledger which is accessed not only by TPPP 70 but by multiple distinct business entities would make Smith’s system less secure. Ex. 2001 ¶¶ 52–54; see also Ex. 1004 ¶ 59 (“This sensitive information is to be stored in a Payment Card Industry (aka PCI) level 1 environment. This environment maintains the highest level of compliance and encryption within the Payment Card Industry”). Dr. Olivier testifies: As the information on a public ledger is publicly accessible, the confidential information for each and every transaction would be accessible to everyone. A POSITA would not make this combination as the POSITA recognizes it would expose not only confidential information for each customer, but also confidential information for each business.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundDecided for patent owner
“need for verification (see e.g., Pet. 21 (“Smith expressly contemplates the need to verify transactions ‘based upon the transaction data files’ store in the TPPP’s ledger”)), we agree with Patent Owner that Smith and Seger teach two different kinds of verification. “A key purpose of Smith is [] having an independent, third-party payment processor that independently verifies data and maintains, controls, and modifies information in its secure database.” Prelim. Resp. 48 (citing Ex. 2001 ¶¶ 63–67). Smith teaches that TPPP 70 hosts a web interface so that a business can access the database to verify the accuracy of the data in the ACH detailed record and transaction data file by providing the transaction key and password. Ex. 1004 ¶ 56. Further, Smith teaches that TPPP 70 updates the transaction data files after TPPP 70 verifies the accuracy of the data. Ex. 1004 ¶ 53 (“The third-party processor 70 further attaches any additional transaction data files to the record associated with the transaction key . . .”). Seger, however, concerns recording communication on a ledger so the record of the communication cannot be changed, regardless of the accuracy of the information in the communication. Ex. 1005, 1:16–21, 5:7–14, 10:19–23; Ex. 2001 ¶ 65. The asserted advantage of Seger’s distributed ledger blockchain is that it is immutable and ensures that the transaction data cannot be altered. Pet. 25. We determine that Petitioner has not adequately explained how a POSITA would have incorporated Seger’s immutable distributed blockchain into Smith’s system that utilizes TPPP 70 to verify the accuracy of transaction data. We are persuaded by Patent Owner and Dr. Oliver that Petitioner’s proposed combination of Smith and Seger requires more than simply swapping out TPPP 70’s database with a blockchain. Petitioner has not adequately shown that it would have been obvious to a POSITA to replace Smith’s database in TPPP 70’s with a distributed ledger blockchain as disclosed in Seger.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,984,413
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.