• Skullcandy, Inc. v. Earin ABInstitution denied
  PTAB · Sep 15, 2025 · IPR2025-00690 · APJ Monica S Ullagaddi · IPR · Director review

  The Board denied institution because the petition did not show a reasonable likelihood that claims 20 and 21 were unpatentable on any asserted obviousness ground.

  RulingsDirector review 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 standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. We thus decline to institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, 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.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed.Cir.1986)).” slip op. at 7

  • BurdenNot shown unpatentable

    “Analysis of the Parties’ Contentions We agree with Patent Owner that the Petition is conclusory––the Cooperstock Declaration merely reiterates the position set forth in the Petition and does not provide sufficient detail or explanation of why Olodort’s “low power state” would have been understood by a POSITA to mean that “existing connections to a second wireless earbud and to a wireless audio streaming host device will be disconnected,” as recited in claim 20. 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 Pet. 23–24; Ex. 1007 ¶¶ 84–87. We further agree that claim 38 is not directed to entering “a standby mode” as it recites “the low power state is a standby mode from which the second earpiece is awakened in response to detecting that the second earpiece has been attached to an ear.” Ex. 1002, claim 38 (emphasis added). As such, we agree with Patent Owner that Olodort’s “claim 38 contains no disclosure concerning what happens to ‘existing connections’ when exiting, let alone entering, the ‘standby mode.’” See Prelim. Resp. 9 (citing Ex. 1002, claims 32, 34, 38). We further agree with Patent Owner that the Cooperstock Declaration in paragraphs 86 and 87 sets forth an alternative obviousness theory “based on a modification to Olodort to add ‘circuitry for disconnecting the earbuds from one another and from any wireless audio streaming host device when in the low power state’” that is improperly incorporated by reference into the Petition. Prelim. Resp. 10–11 (emphasis added) (citing 35 U.S.C. § 312(a)(3) (A petition for inter partes review “may be considered only if . . . the petition identifies, in writing and with particularity . . . the evidence that supports the grounds for challenged to each claim.”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”); 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another.”)). As such, we need not and do not consider this alternative obviousness theory.” slip op. at 18

  • Expert testimonyDecided for patent owner

    “Analysis of the Parties’ Contentions We agree with Patent Owner that the Petition is conclusory––the Cooperstock Declaration merely reiterates the position set forth in the Petition and does not provide sufficient detail or explanation of why Olodort’s “low power state” would have been understood by a POSITA to mean that “existing connections to a second wireless earbud and to a wireless audio streaming host device will be disconnected,” as recited in claim 20. 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 Pet. 23–24; Ex. 1007 ¶¶ 84–87. We further agree that claim 38 is not directed to entering “a standby mode” as it recites “the low power state is a standby mode from which the second earpiece is awakened in response to detecting that the second earpiece has been attached to an ear.” Ex. 1002, claim 38 (emphasis added). As such, we agree with Patent Owner that Olodort’s “claim 38 contains no disclosure concerning what happens to ‘existing connections’ when exiting, let alone entering, the ‘standby mode.’” See Prelim. Resp. 9 (citing Ex. 1002, claims 32, 34, 38). We further agree with Patent Owner that the Cooperstock Declaration in paragraphs 86 and 87 sets forth an alternative obviousness theory “based on a modification to Olodort to add ‘circuitry for disconnecting the earbuds from one another and from any wireless audio streaming host device when in the low power state’” that is improperly incorporated by reference into the Petition. Prelim. Resp. 10–11 (emphasis added) (citing 35 U.S.C. § 312(a)(3) (A petition for inter partes review “may be considered only if . . . the petition identifies, in writing and with particularity . . . the evidence that supports the grounds for challenged to each claim.”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”); 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another.”)). As such, we need not and do not consider this alternative obviousness theory.” slip op. at 18

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,402,120
• Crowdstrike, Inc. v. Gosecure, Inc.Institution denied
  PTAB · May 9, 2025 · IPR2025-00069 · APJ Garth D Baer · IPR · Institution

  The Board denied institution because the petition did not show that the prior art teaches creating a fingerprint at the virtual machine monitor, as claims 1–18 and 21–23 require.

  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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification describes only fingerprint creation outside the virtual machine monitor because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. See Sur-reply 1– 2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9

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

    “Petitioner does not contest that Capalik’s fingerprint generation occurs outside the components that Petitioner identifies as the claimed virtual machine monitor. Reply 1–3; see Pet. 18–23 (mapping Capalik’s hypervisor kernel 516 to the claimed virtual machine monitor); id. at 30–31 (mapping Capalik’s processing module 508 and signature generation engine 530 to the claimed fingerprint creation); see also Prelim. Resp. 21–23 (explaining Petitioner’s mapping). Instead, Petitioner asserts that the at-issue claim language—“at the virtual machine monitor”—does not require “that each of the subsequently recited steps must be performed by or in the [virtual machine monitor],” but instead only requires “that the fingerprint is generated by the same decoy system that contains the [virtual machine monitor].” Reply 2. Petitioner argues that the intrinsic record supports its position because “[n]owhere in the ’697 Patent is there any teaching or suggestion that a [virtual machine monitor] creates a fingerprint/signature indicative of attack activity,” and instead, “[t]he ’697 Patent teaches that its signature generation engine is separate from the [virtual machine monitor].” Reply 2 (citing Ex. 1001, 8:12–19). In addition, Petitioner asserts that requiring fingerprint creation at the virtual machine monitor “directly” slip op. at 8

  • Adverse judgmentOther

    “D. Statutory Disclaimer and Remaining Challenged Claims The Petition challenges claims 1–23. Pet. 10. However, because Patent Owner disclaimed claims 19 and 20 (Ex. 2010), the remaining challenged claims are 1–18 and 21–23. See 37 C.F.R. § 42.107(e) (2020) (“No inter partes review will be instituted based on disclaimed claims.”). Of the remaining challenged claims, only claim 1 is independent. Claim 1 is reproduced below:” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 9,106,697
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Feb 11, 2025 · IPR2024-01249 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because neither the Hottinen–Lilleberg nor Zimmerman–Lilleberg combination showed the claimed parameter tracking unit or an equivalent for claims 1, 3–5, and 7–9.

  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). We may not institute an inter partes review “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 consideration of the arguments and evidence presented, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to either ground asserted in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “at the time of the ’505 patent had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation,” where “[m]ore education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 51–55). Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. We find Petitioner’s proposal to be consistent with the evidence of record, including the asserted prior art and the ’505 patent, and accordingly, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 16

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

    “for use in conjunction with a signal separation unit, in which each received signal has associated channel transfer functions.” Ex. 1001, 12:42–45. The preamble of independent claim 9 similarly recites “a parameter estimation unit for use in conjunction with a signal separation unit for estimating channel transfer function parameters from channel transfer functions.” Id. at 14:4–7. Petitioner, however, contends that “this claim term is not part of the preamble” and that “the preamble is [only] ‘In a multi-user detection system in which interfering signals are purposely allowed to exist.’” Pet. 14. Regardless, Petitioner further contends, to the extent there is any argument that that recitation is part of the preamble, “it is limiting at least because it provides antecedent basis to the ‘parameter estimation unit’ and ‘associated channel transfer functions’ terms that are used in the remainder of the body of the claims and is ‘essential to understanding the structural limitations’ of the parameter estimation unit.” Id. Apart from arguing that the recited “parameter estimation unit” is limiting, Petitioner does not propose any id. Patent Owner does not respond to Petitioner’s contentions and also does not argue that any construction is necessary for the parameter estimation unit. See generally Prelim. Resp. As reproduced in Section II.D. above, the preamble of claim 1, in its entirety, recites, “In a multi-user detection system in which interfering signals are purposely allowed to exist, a parameter estimation unit for use in conjunction with a signal separation unit, in which each received signal has associated channel transfer functions.” Ex. 1001, 12:41–45. The preamble of claim 9 is similar. Id. at 14:3–7 (reciting “In a multi-user detection system in which interfering signals are purposely allowed to exist, a parameter estimation unit for use in conjunction with a signal separation unit for estimating channel transfer function parameters from channel transfer functions”). The body of each claim recites the elements of the recited “parameter estimation unit,” namely, “a signal processor for determining said channel transfer functions for each received signal” and “means . . . for providing uninterrupted estimates of the channel transfer function parameters on a real-time basis . . . .” The phrase “In a multi-user detection system in which interfering signals are purposely allowed to exist” provides additional context for the environment in which the parameter estimation unit is intended to operate. Whether the preamble is limiting is a question that we do not need to decide here, however. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Because Patent Owner does not dispute Petitioner’s contentions with respect to the preamble recitations, and our decision herein need not reach a determination with regard to that question.” slip op. at 17

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

    “A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.6 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. When construing a means-plus-function limitation under § 112 ¶ 6, it is necessary first to identify the claimed function, and then to look to the specification to identify the corresponding structure for that function. In re Aoyama, 656 F.3d 1293, 1296–97 (Fed. Cir. 2011); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Under that second step, “structure disclosed in the specification is corresponding 6 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated 35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Because the ’676 patent has a filing date before September 16, 2012 (effective date of the statute), we refer to the pre-AIA version of 35 U.S.C. § 112. associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). Our Rules specifically require that the petition identify the corresponding structure in proposing a construction for a means-plus-function claim limitation. 37 C.F.R. § 42.104(b)(3). “This inquiry is undertaken from the perspective of a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at 1113.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,947,505
• Duration Media LLC v. Rich Media Club LLCInstitution denied
  PTAB · Oct 17, 2024 · IPR2024-00937 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–14 were obvious over the asserted grounds.

  RulingsInstitution decision

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

    “In sum, the Petition fails to demonstrate that the asserted prior art teaches, or renders obvious, the “causing a communication” limitation, let alone it being in response to the “determination” limitation. There is not a reasonable likelihood of Petitioner prevailing as to claim 1.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “page is in the visible area of the browser window.” Ex. 1001, 60:4–6. But nothing in the claim suggests that the determination is optional or that it need not ever occur. For example, the “in response to” limitation of claim 1 does not use the conjunction “if,” as was the case in Schulhauser. See 2016 WL 6277792, *3 (interpreting “triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria” such that “triggering an alarm state” only needs to be performed “if the electrocardiac signal data is not within the threshold electrocardiac criteria.”).7 In fact, the prior step (a) of claim 1 explicitly requires the determination, reciting: “(a) determining whether a predefined portion of the predefined area of the ad content display page is in the visible area of the browser window.” Ex. 1001, 60:1–3. As properly construed, the “in response to” language modifies the recited step of “causing a communication to be sent from the remote computing device to one or more dispatcher servers” such that the step must be “in response to a determination that the predefined portion of the predefined area of the ad content display page is in the visible area of the browser window.” Ex. 1001, 60:4–8. In other words, “causing a communication” is a required step of the method of claim 1.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Patent Owner argues that a person having ordinary skill in the art also would have had “experience in the internet advertising industry” and urges us to adopt the same formulation as we adopted in the final written decision in IPR2023-00953. Prelim. Resp. 4. We agree with Patent Owner that the person of ordinary skill in the art would have had such experience. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). The difference between the parties’ proposals as to the person of ordinary skill in the art, however, is immaterial here. Thus, for purposes of deciding the Petition, we adopt Petitioner’s proposal.” slip op. at 10

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

    “when the content area is visible.” (citing Ex. 1018, 10:16–18)); see also Ex. 1018, 5:11–14 (“In operation S202, the system identifies whether the event occurs. When the event occurs, the system performs operation S203, otherwise, the system waits for the event to occur. In this instance, the event may include a user enter event or a scrolling event.”). Whether a scrolling event occurs, however, does not satisfy the specific language of the claim reciting “a determination that the predefined portion of the predefined area of the ad content display page is in the visible area of the browser window.” Nor does the Petition explain how it might.” slip op. at 15

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 11,741,482
• Google LLC v. Dialect, LLCInstitution denied
  PTAB · Oct 11, 2024 · IPR2024-00749 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable, including failing to persuasively show parser-based domain-agent selection.

  RulingsInstitution decision

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

    “information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and the associated evidence, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “not demonstrate a reasonable likelihood of Petitioner prevailing with respect to any challenged claim. For example, Petitioner and Mr. Schmandt do not address the challenged claims’ selecting limitations in a sufficiently persuasive manner. Coffman’s disclosure is high-level, which Petitioner and Mr. Schmandt recognize. See, e.g., Pet. 48; Ex. 1002 ¶ 125. Coffman’s high-level discussion lacks clear disclosures of certain key things that Petitioner and Mr. Schmandt perceive in Coffman’s disclosure. And Petitioner and Mr. Schmandt do not provide sufficiently clear, persuasive explanation to substantiate their position that Coffman teaches the challenged claims’ selecting limitations.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of speech- and natural language-interfaces for interacting with and directing computer systems and software, including speech recognition and processing (and more experience could substitute for less formal education, and vice versa).” Pet. 21 (citing Ex. 1002 ¶¶ 11–15). At this stage, Patent Owner does not dispute Petitioner’s proposed level of skill in the art. See, generally, Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’720 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Both Parties express that we do not need to construe any claim language explicitly. Pet. 23; Prelim. Resp. 13. We agree that no explicit claim construction is necessary for this Decision. 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 controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,693,720
• Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 10,984,413
• Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution denied
  PTAB · 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 · Graham
  Patents in suitUS 10,984,413
• I4f Licensing NV v. Vilox ABInstitution denied
  PTAB · Aug 21, 2024 · IPR2024-00602 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were anticipated by Miller or obvious over Miller alone or Miller and Roy.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons explained below, we do not institute an inter partes review.” slip op. at 2

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

    “Considering all of the arguments and evidence, we agree with Patent Owner that Petitioner insufficiently supports its position that Miller discloses a locking recess with a curved horizontal locking surface. Petitioner does not cite any text in Miller that discloses a locking recess with a curved horizontal locking surface. E.g., Pet. 7–8, 14–23. Instead, Petitioner relies on Miller’s Figure 3 as allegedly showing a curved horizontal locking surface. E.g., id. at 15–18, 21–23. We do not find that Miller’s Figure 3 shows a locking recess with a curved horizontal locking surface in the location identified by Petitioner, i.e., the location of the curved red arrow that Petitioner added to Miller’s Figure 3. E.g., Pet. 15, 22. Even assuming that this portion of Miller’s drawing shows a very subtle rise (which we do not find), it does not show clearly a curve, as opposed to, for example, a slightly inclined flat surface. Moreover, we agree with Patent Owner that, at the point of Petitioner’s curved red arrow, Figure 3’s overlapping representation of the tongue’s lower surface and the groove’s upper surface prevents distinguishing one from the other. Prelim. Resp. 45 (“In Figure 3, the lines merge so that no conclusion can reasonably be made by a [person of ordinary skill in the art] as to whether a locking recess is present in the groove or not.”). Accordingly, Figure 3 does not allow discerning a curve in the groove’s upper surface at the point identified by Petitioner.” slip op. at 17

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

    “Additionally, Petitioner does not provide a persuasive reason that a person of ordinary skill in the art would have had to configure Miller’s panel with a curved horizontal locking surface, in addition to an inclined horizontal locking surface, as required by independent claim 1. Pet. 34–39; Prelim. Resp. 54. In support of its argument that it was well-known to use curved locking surfaces, Petitioner provides a vague string cite of evidence that dubiously includes Miller (which has not been shown to disclose a curved horizontal locking surface). Pet. 37 (citing Ex. 1002 ¶¶ 25–26, 56; Ex. 1006, Figs. 2–4, 9, and 10 and associated description; Ex. 1004; Ex. 1006; Ex. 1005; Ex. 1009; Ex. 1010; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014). Moreover, to the extent Petitioner is correct that it was well-known and easy to configure a panel with a curved locking surface, that may show that a person of ordinary skill in the art could have added a curved horizontal locking surface to Miller’s panel. But that does not show sufficiently that such a modification would have been obvious, as it does not demonstrate why a person of ordinary skill in the art would have modified Miller’s cladding panel to add a curved horizontal locking surface. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (stating that “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”) (citing InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351–1352 (Fed. Cir. 2014)). Additionally, to the extent that Petitioner is correct that a person of ordinary skill in the art would have recognized a strength benefit of having two locking recesses, that does not explain why a person of ordinary skill in the art would have added a curved locking surface, as opposed to, for example, another substantially planar locking surface like the one at Miller’s contact point 42. Pet. 36–39; Ex. 1004, 5:19–34. And Petitioner does not identify, much less substantiate, any other reason that a person of ordinary skill in the art would have had for combining a curved locking surface with an inclined horizontal locking surface in Miller’s cladding panel. Pet. 36–39. Because Petitioner has not persuasively addressed claim 1’s requirement that its dual locking recesses include one with a curved horizontal locking surface, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Miller. E.g., Pet. 7–8, 34–39. Additionally, this deficiency is not remedied in Petitioner’s challenges to dependent claims 2–15 based on Miller. E.g., Pet. 34, 40–50. Accordingly, Petitioner does not establish a reasonable likelihood of prevailing on its position that dependent claims 2–15 would have been obvious over Miller.” slip op. at 23

  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,421,425
• Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution denied
  PTAB · Feb 22, 2024 · IPR2023-01340 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the cited references.

  RulingsInstitution decision

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

    “D. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations).9 Graham v. John Deere Co., 383 U.S. 1,” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that “a POSA6 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the” slip op. at 8

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

    “actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been 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. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 9

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

    “Analysis Based on the current record, we agree with Patent Owner, that the Petition does not adequately explain why it would have been obvious to a person of ordinary skill in the art to determine the species of flying vertebrate (as required by limitation 1a) and position the netting for capture based on the species of flying vertebrate (as required by limitation 1d). All of the references relied upon assume the species of flying vertebrate. Specifically, Bird Barrier Video assumes that the flying vertebrate is a bird. See generally, Ex. 1003; see also Ex. 1004. Albanese and Sheldon (which specifically applies to American woodcocks) also assume that the flying vertebrate is a bird. See generally, Ex. 1010, see also Ex. 1011. Kunz assumes the flying vertebrate is a bat. See generally, Ex. 1009. Although, Kunz mentions birds, it does so in the context of setting its mist nets so as to not catch birds. Ex. 1009, 30. Thus, none of these references suggest that the method described therein pertains to a type of flying vertebrate other than the type of flying vertebrate described. In the absence of any explanation as to why a person of ordinary skill in the art would need to determine the species of flying vertebrate, Petitioner’s assertion that a person of ordinary skill “would be motivated to combine [Kunz, Albanese, and Sheldon] with the teachings of Bird Barrier Video to increase the chances of capturing a targeted bird within a large building” lacks rationale underpinning. Pet. 27. We also determine that Petitioner does not sufficiently explain why a person of ordinary skill in the art would be motivated to replace Bird Barrier Video’s magnetic connectors with hooks as required by limitation 1ci. Ex. 1001, 6:1. Petitioner contends that “using hooks instead of magnetic heads would have been obvious to a POSA as there is no material difference on the ends of poles to attach the poles to an overhead structure is commonly used in various fields. Pet. 29 (citing Ex. 1018, “Bebout”). Petitioner, however, does not explain how Bebout’s teachings would lead a person of ordinary skill in the art to modify or replace Bird Barrier Video’s magnetic heads with hooks. See generally, Petition. Further, we do not agree with Petitioner’s assertion that there is no material difference between magnetic heads and hooks. For example, we understand that Bird Barrier Video’s magnetic head requires a magnetic surface, whereas hooks do not. Conversely, we understand hooks to require a structure that provides something for the hook to hook on to, whereas magnetic heads do not. Thus, it is not necessarily true that both a magnetic head and a hook have the same functionality such that a skilled artisan would find it obvious to replace one with the other.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,943,073
• Safe Haven Wildlife Removal And Property Management Experts LLC v. Meridian Wildlife Services LLCInstitution denied
  PTAB · Feb 22, 2024 · IPR2023-01341 · APJ Amee A Shah · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations of Bird Barrier Video and the other references.

  RulingsInstitution decision

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

    “On the record before us, Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of claims 1–3 based on Bird Barrier Video and/or Kunz and/or Albanese and/or Sheldon. Because we deny institution on the merits, we do not address Patent Owner’s arguments that the proposed combination lacks particularity and that the Chamberlain Declaration is inadmissible. Prelim. Resp. 4–9, 29–33 (citing Ex. 2001; Fed. R. Evid. 801, 802; 37 C.F.R. § 42.62). IV. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the ’663 patent, we do not institute an inter partes review” slip op. at 39

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that “a POSA10 ‘would have had at least either (i) at least a bachelor’s degree in the study of wildlife management or wildlife ecology or (ii) two or more years of field experience trapping flying animals,’” quoting the definition of a POSA adopted by the Board at the institution stage in IPR2022-01253. Pet. 22 (quoting Ex. 1014, 9). Patent Owner does not challenge this definition of the level of skill at this time. See generally Prelim. Resp.; Sur-Reply. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

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

    “Patent Owner argues that (a) Petitioner fails to sufficiently identify how the challenged claims are to be construed, and (b) “[t]he amendments and arguments made during prosecution of the ’663 patent reveal that the phrase ‘configured to raise the entire bird netting’ in Claim 1 [limitation b.iii] must be construed to require the capability to raise the entire bird netting to prevent the netting from blocking activities on the floor of the building it is used in.” Prelim. Resp. 9–15 (citing Ex. 1002, 21). As explained below in Section III.E.3, we find that, for reasons not related to limitation b.iii of claim 1, Petitioner’s arguments and evidence do not demonstrate a reasonable likelihood of establishing that the challenged claims are unpatentable. Thus, we do not find it necessary to construe expressly any language of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  • BurdenNot shown unpatentable

    “3. Analysis Even assuming, arguendo, that the Bird Barrier Video teaches at least independent claim 1’s device that is “for repeated quick set up for safe live capture of a flying vertebrate indoors in a large building having a floor and a ceiling supported by rafters or beams” and comprises “bird netting capable of catching and holding the flying vertebrate when it flies into the bird underpinning demonstrating how or why a person of ordinary skill in the art would have modified Bird Barrier Video to, at least, have a plurality of poles for sitting on the floor and a hook positioned at a top of each pole configured to attach the poles overhead to the ceiling by attachment over the top of a ceiling rafter and beam, as recited in claim 1’s limitations b and b.i. Regarding limitation b, Petitioner acknowledges that Bird Barrier Video does not disclose or suggest that its poles are “for sitting on the floor.” Pet. 24. Petitioner contends “it would be obvious to place them on the floor if needed to capture a bird in a lower location.” Id. Yet, the claim requires that the poles are for “sitting on the floor,” and not simply “to place” on the floor. Petitioner does not explain, nor does Bird Barrier Video show, the structure of Bird Barrier Video’s poles such that they can be “for sitting on the floor.” Moreover, Petitioner’s reasoning presumes that the net disclosed in the Bird Barrier video, which is suspended from the ceiling, would be incapable of capturing low-flying birds, yet the record does not support such a finding.” slip op. at 33

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,154,663

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.