- Cybersecure Ips, LLC v. Network Integrity Systems, Inc.Institution deniedPTAB · May 26, 2026 · IPR2025-01441 · APJ John A Squires · IPR · Institution
The Director denied institution of IPR challenging claims 1–5 and 8–16, despite finding two claims met the institution threshold, because a trial would not efficiently use Board resources.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s third ground challenging claims 8 and 12 meets the reasonable likelihood threshold for institution, in part because it relies on a reference that expressly discloses detecting movement. See id. at 73–74. Petitioner’s remaining grounds, however, fail to meet the reasonable likelihood standard. Petitioner makes inherency arguments relying on expert testimony, but does not explain sufficiently how the prior art inherently discloses the detecting movement limitation. See id. at 7, 33, 59–60, 92–93; Ex. 1003 ¶ 59.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“At most, the challenges to only two of the fourteen challenged claims meet the reasonable likelihood standard for institution. Under these circumstances, institution of trial would not be an efficient use of Board resources. Factors such as the efficient administration of the Office, coupled with the ability of the Office to timely complete its work, by their nature, center broadly on the Office, the patent system, and the public interest and, thus, inform my exercise of discretion. See, e.g., Chevron Oronite Co v. Infineum USA, IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative) (determining that instituting a trial was “not an efficient use of the Board’s time and resources” where only two of twenty challenged claims met the reasonable likelihood standard).” slip op. at 2
Discretionary denialPatents in suitUS 7,706,641 - Eunsung Global Corp. v. Hydrafacial LLCInstitution deniedPTAB · Apr 11, 2025 · IPR2024-01491 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the advanced ITC proceeding and substantial overlap made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel litigation, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find that Petitioner’s obviousness challenges meet the standard for institution. We also will not speculate as to whether the other three petitions referenced by Petitioner will be instituted. Taken together with the other” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner asserts that we should deny the Petition under 35 U.S.C. § 325(d) because the Petition presents substantially the same art and arguments that the Office previously analyzed and fails to show that the Office erred during prosecution. See Prelim. Resp. 58–68. Because we exercise discretion to deny institution under 35 U.S.C. § 314(a) for the reasons discussed above, we do not need to reach Patent Owner’s argument regarding denial under § 325(d).” slip op. at 17
Discretionary denialPatents in suitUS 11,865,287 - Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - Securus Technologies, Inc. v. Global Tel*link CorporationInstitution deniedPTAB · Oct 11, 2017 · IPR2017-01177 · APJ Kevin F Turner · IPR · Institution
Instituted review of claims 1–20: claims 1–6 and 8–15 on obviousness over Otto, and claims 7 and 16–20 on obviousness over Otto, Gainsboro, and San Martin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we conclude that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1–20 of the ’250 Patent are unpatentable. The Board has not made a final determination with respect to the patentability of these claims. The Board’s final determination will be based on the record as developed fully during trial.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As quoted by Patent Owner, 35 U.S.C. § 325(d) addresses whether “the same or substantially the same prior art or arguments previously were presented to the Office.” To evaluate this criterion, we examine what arguments and art were presented to and considered by the Examiner during prosecution. Although Otto was considered by the Examiner (Ex. 1004, 243 indicates Otto was included in an Information Disclosure Statement by the Applicant), the Examiner did not rely on Otto in any rejection of the issued claims in view of Otto. We are further persuaded that the Examiner has not been shown to have considered Otto in the instant context, i.e., with claims 10 being argued as being obvious over Otto and with declaration testimony opining that the claims would have been obvious over Otto (Ex. 1002). Patent Owner also faults Petitioner for not distinguishing Otto from San Martin (Prelim. Resp. 7), but it is not necessarily incumbent on a petitioner to distinguish the disclosures of newly applied and previously applied prior art references. Patent Owner points out similarities in the disclosures of Otto and San Martin (id. at 6–7), but does not demonstrate what similar portions of Otto and San Martin would have been considered in finding certain claims allowable. See Ex. 1004, 219. Such a consideration is important because Patent Owner incorporated the allowable subject matter into the independent claims to gain allowance. See Ex. 1004, 290. At this stage of the proceedings, we are persuaded that that there is a reasonable likelihood that Petitioner would prevail in showing the subject matter of the independent claims are taught or suggested by Otto, and as discussed below, we are not persuaded that the disclosures of Otto and San Martin are necessarily cumulative.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“With respect to the level of ordinary skill in the art, Petitioner asserts that such a person “would have held at least a bachelor’s degree in electrical engineering, computer engineering, or a similar field, and had at least two years of experience (or the academic equivalent) working with speaker-dependent voice recognition in the context of telecommunications.” Pet. 7 (citing Ex. 1002 ¶¶ 38–41). Patent Owner does not offer an alternate characterization at this time. As such, we adopt Petitioner’s statement of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Hence, we determine that “match” would have been understood as determining whether two data items are identical or finding a data item that is identical to a key. See Ex. 3001. Furthermore, we determine that “substantially” would have been understood as to a great or significant extent, or for the most part or essentially. See Ex. 3002. Therefore, we determine that the broadest reasonable construction, consistent with and in 7 the context of the specification, of “substantially matches” is “determining whether two data items are for the most part or essentially identical.” See also Verve v. Crane Cams, 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“Expressions such as “substantially” are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.”)); see, e.g., Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (explaining that “like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims to avoid a strict numerical boundary to the specified parameter”) (citation omitted). Although Petitioner does not proffer an explicit construction for the claim term “substantially matches,” Petitioner does argue that the prior art discloses “both exact matches and matches that deviate from exact matches by predetermined amounts.” Pet. 29 (citing Ex. 1002 ¶ 74). Therefore, we are persuaded that Petitioner is implicitly applying a claim construction of “substantially matches” that comports with the broadest reasonable construction determined herein.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites NautilusPatents in suitUS 9,521,250 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution
Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15
- Other 314aInstitution denied discretionary other
“E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,764,231 - Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution deniedPTAB · Jul 20, 2015 · IPR2015-00762 · APJ Patrick M Boucher · IPR · Institution
The Board denied joinder and denied institution because the petition was time-barred under § 315(b), despite finding a reasonable likelihood that claims 1–3, 8, 9, 12, 16, and 19 were anticipated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied
“Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Section 315(c) provides: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. In our view, the phrase “join as a party” indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding. A person cannot be joined as a party to a proceeding in which it is already a party. That the statute uses the expansive term “any person” is of little moment because the overall language of the statute places unambiguous limits on the term. Specifically, the phrase “join as a party” excludes a person who is already a party.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstituted
“We conclude that Petitioners have established a reasonable likelihood of prevailing on their contention that Hideji discloses performing sinewave commutation using independent values of Q and d axis currents in the manner recited in each of independent claims 1, 16, and 19. Thus, we conclude that Petitioners have established a reasonable likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji. B. Time Bar Under 35 U.S.C. § 315(b) Section 315(b) provides: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“contention that Hideji discloses “performing sinewave commutation, using independent values of Q and d axis currents, in response to one or more control signals received from the system controller to produce continuous phase currents in the permanent magnet motor for driving the air-moving component,” recited in each of independent claims 1, 16, and 19. Pet. at 19– 26. Patent Owner contends that Hideji fails to disclose the use of independent values of Q and d axis currents: “In fact, Hideji discloses that it employs calculations in the rotating frame of reference in which Q and d axis currents depend on each other.” Prelim. Resp. 20. Petitioners observe that Figure 2 of Hideji illustrates that three-phase / two-phase coordinate conversion part 36 outputs separate values for Iq and Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that 3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are identified directly as such in the original Japanese reference. Ex. 1003, 8. [t]he three-phase/two-phase coordinate conversion part 36 converts the coordinates of the alternating current Iu and Iv introduced by the current input part 35 to a revolving coordination system (d-q coordination system) on the rotor of the brushless DC motor 30A, and calculates flux current Id (d-axis current) and torque current Iq (q-axis current). Ex. 1005 ¶ 35. Petitioners reason that such transformation results in separate, independent values of Q and d axis currents determined from control signals received from the system controller. Pet. 23. Petitioners support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38. Patent Owner responds that “the values coming from part 36 are at best a transform into the rotating frame of reference of actual measured currents” and that “[t]hey are not the demanded currents generated by the controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of these values as “Iq” and “Id” in the original Japanese reference, Patent Owner also contends that they “are not values one of ordinary skill would refer to as Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the current control part 40 output that is used to create the continuous phase sine wave commutated currents for the motor after being transformed back out of the rotating frame of reference,” reasoning that “[i]f Iq and Id are not independent at this step, the ‘motor controller’ is not using ‘independent values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at 24. Patent Owner contends that such inputs are not independent, noting” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,626,349
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.