- Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01389 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–4 because Petitioner did not show a reasonable likelihood of establishing unpatentability under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . 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 explained below, we do not institute an inter partes review of the ’000 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “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) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party proposes construing any claim term. Pet. 6; Prelim. Resp. 36. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. 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 7
- Skill levelSkill level board ownOther
“3 The parties do not dispute that a skilled artisan “would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services.” Pet. 6 (citing Ex. 1003 ¶ 85); Prelim. Resp. 35– 36. 4 The record does not include allegations or evidence of objective indicia of nonobviousness.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“connotes interactivity, and does not explain why a “Data Animation Effect” would be interactive.6 These aspects of Figure 53 do not appear to show interactivity. Thus, the issue is whether selecting a choice other than “Hide” for “Scroll buttons” in box 710 of Figure 53 adds to chart 840, once published, a feature that allows a user to interact with that chart via scrolling, or whether “Scroll buttons” refers to some other feature of the configuration process (such as the scroll buttons shown in Figure 53 for scrolling through the various charts in the layout). Both experts provide conclusory testimony stating how they view Figure 53. Ex. 1003 ¶ 181 (“For example, Figure 53 of Rostoker shows the ‘Configure Chart View’ toolbar, which includes multiple ‘interactive’ features, such as making the chart ‘Selectable’ (suggesting interactivity using an input device such as a mouse), including ‘Scroll buttons’ to scroll the chart, and adding ‘Data Animation[s].’”); Ex. 2001 ¶ 141 (“Schmandt relies on the ‘Configure Chart View’ toolbar of FIG. 53 of Rostoker, but he is confusing the configuration step 330 of Rostoker with the end result.”). Petitioner invites us to speculate as to the behavior of features that are depicted in Figure 53 but otherwise are not described in any meaningful detail by Rostoker. We conclude that this is insufficient to show a reasonable likelihood of prevailing.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,520,000 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01388 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–18 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . 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 explained below, we do not institute an inter partes review of the ’595 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “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” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At most, Jou teaches that it was known to interact with charts in a Windows environment or a browser window. Ex. 1007 ¶ 34. But Rostoker already teaches that a user could interact with a chart, via a graphical user interface in a web browser, while configuring the chart. Ex. 1005 ¶¶ 67–75. Petitioner does not explain persuasively why a skilled artisan, per the teachings of Jou, would have made Rostoker’s published charts interactive. Mr. Schmandt’s testimony that a skilled artisan “would have been motivated to incorporate Jou’s additional ‘interactive’ features into Rostoker’s system to enable users to better visualize and explore business data,” is not supported by his citations to Jou, at least as to whether a skilled artisan would have modified Rostoker’s published charts. Ex. 1003 ¶ 259 (citing Ex. 1007 ¶¶ 8, 9). Petitioner’s argument that Flash and Java could enable interactive features, at most, show that a skilled artisan could have implemented interactive features with Rostoker’s a reason why a skilled artisan would have made these modifications. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))). Thus, we are not persuaded that Petitioner is likely to show that a skilled artisan would have incorporated Jou’s interactive features into Rostoker to make Rostoker’s published charts interactive.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“client is required for display and usage of an existing QlikView document (.qvw file). While the QlikView Server is responsible for opening, hosting, and calculating the document, the clients are required for user interaction and presenting the document and its objects.” Ex. 1009, 123. Petitioner points to no persuasive evidence that a Java or AJAX object or client executing at a web browser is a website separate from the server that serves the object or client. Mr. Schmandt makes conclusory statements to that effect, but does not state the basis for his testimony. Ex. 1003 ¶¶ 338–339. Thus, Mr. Schmandt’s testimony on this point is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and support, and is entitled to little weight.”).” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,712,595 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Feb 5, 2025 · IPR2024-00920 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–24, 26, 29–33, 35, or 38 were unpatentable over the asserted Koga-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that Petitioner has not established a reasonable likelihood that it will prevail in proving the unpatentability of at least one challenged claim of the ’991 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. at 25–26 (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based on the ordinary meaning of the phrases, “spatial samples” and “spatial information” must refer to different information. Because the “spatial samples [are] decoded into spatial information,” the decoded “spatial information” must be different than the coded “spatial samples.” If “spatial information” were the same as “spatial samples,” then there would be nothing to decode. That construction is consistent with the claim construction rule that different terms are presumed to have different meanings. See MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings . . . .”)). Here, we see no evidence that the claim phrases have the same meaning. To the contrary, the ’991 patent uses the term spatial samples to refer to the image’s pixel values. See, e.g., Ex. 1001, 2:65–67 (“the prediction error signal for a single image block is constructed using both transform basis functions and spatial samples (i.e., pixel values)”) (emphasis added); id. at 4:21–26 (same). The spatial information, however, refers to the result of decoding. See, e.g., id. at 3:29–30 (“the plurality of spatial samples are decoded into decoded spatial information”) (emphasis added); id. at 6:53–55 (“the decoded spatial information and reconstructed prediction of the image block are added together to form the decoded representation of the image block”) (emphasis added); id., Fig. 5, 520 (showing “Decoded Spatial Info”). This is consistent with the claim’s plain language. See id. at 10:1–2 (claim 22 reciting “decoding, by a processor, the plurality of spatial samples into decoded spatial information”) (emphasis added). Accordingly, “spatial samples” and “spatial information” do not refer to the same thing.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument. Petitioner maps both spatial samples and spatial information to the residual of the prediction error. Compare Pet. 37 (referring to spatial samples as the residual of the prediction error), with id. at 44 (referring to spatial information as the residual of the prediction error). However, because spatial samples and spatial information cannot refer to the same thing, they cannot both be the residual of the prediction error. See Section II.C.1 supra. Accordingly, Petitioner has not sufficiently shown that claim 22, along with dependent claims 23, 24, 26, and 30 would have been obvious over Koga. See 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.”); Pet. 47–63 (relying on the analysis of claim 22 for the spatial samples and spatial information limitations). With regard to independent claim 31, along with dependent claims 32, 33, and 35, Petitioner relies on the same arguments discussed above for limitation 22a and 22c to show that Koga teaches commensurate limitations 31c and 31d. See Pet. 54 (“As explained above, Koga teaches the shared substantive limitations of [22a]–[22d] (supra §§VI.A.1) that correspond to limitations [31b]–[31e].”). Accordingly, for the same reasons discussed above for claim 22, we are not sufficiently persuaded by Petitioner’s arguments that independent claim 31, along with dependent claims 32, 33, and 35 would have been obvious in view of Koga.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - PTAB · Nov 12, 2024 · IPR2024-00886 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution for claims 9–16 under § 314(a), finding the Fintiv factors favored denial and neither obviousness challenge presented compelling merits.
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 proceeding, 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; 4. overlap between issues raised in the petition and in the 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or Ingale in view of Jung. Pet. 18–51. For the reasons discussed below, we determine that Petitioner’s showing does not rise to the level of “compelling merits” according to the Office’s current guidance and Board precedents. CommScope at 3–4 (quoting Guidance Memo, 4) (“[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges ‘in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”); OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49–50 (PTAB only ‘plainly lead to a conclusion that one or more claims are unpatentable’ . . . if it is highly likely that the petitioner would prevail with respect to at least one challenged claim”). 1. Petitioner’s Showing for Claim 9 Below we provide an element-by-element analysis of Petitioner’s obviousness showing for claim 9. After considering the evidence supporting Petitioner’s obviousness showing, and Patent Owner’s arguments and evidence as to why Petitioners’ obviousness showing is deficient, we consider whether the totality of the evidence rises to the level of compelling merits.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For the reasons set forth above, and even if we consider Petitioner’s proposed rationale for combining Ingale and Jung to be supported by sufficient rational underpinnings (see e.g., Pet. 24–27), neither Jung nor Ingale, either individually or in the proposed combination set forth by Petitioner teach or suggest limitation 9.6 of claim 9 so as to rise to a compelling, meritorious showing for claim 9. 4. Remaining Claims Petitioner’s arguments and evidence for independent claim 13 (Pet. 58–59) and dependent claims 10–12 and 14–16 (id. at 51–57, 59–60) are substantially similar to Petitioner’s arguments and evidence for claim 9 and are unopposed at this stage by Patent Owner (except for the issues discussed above with respect to independent claim 9) (see e.g., Prelim. Resp. 15). Accordingly, Petitioner’s showing for claims 10–16 do not differ or deviate from the showing with respect to independent claim 9 so as to rise to the level of a compelling, meritorious showing, either for independent claim 9, or any of claims 10–16.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 6–7 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Petitioner’s description of a POSITA appears consistent with the subject matter of the ’557 patent and with the prior art of record, we apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,557 - Aptiv Services US, LCC v. Microchip Technology Inc.Institution deniedPTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,564,665 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.
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). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,204,134 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jun 3, 2024 · IPR2024-00350 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review of the ’080 patent and the asserted challenges to patentability.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Contrary to Petitioner’s interpretation of Brandstein’s Figure 5.2, we are not persuaded that the figure and its accompanying text would have rendered it obvious to an ordinarily skilled artisan that the individual microphone responses have similar responses to noise. See Prelim. Resp. 14–16. As stated in IPR2023-01130, and which equally applies here: In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. IPR2023-01130, Paper 10 at 24. Likewise, Figure 5.3 of Brandstein undermines Petitioner’s contention that the virtual microphone noise responses are substantially similar. See Prelim. Resp. 17. We credit the testimony of Dr. Sayeed, who explains Brandstein’s Figure 5.3, which actually depicts the directivity of the cited GJBF’s top and bottom path unlike Figure 5.2, further shows that their responses to noise are not substantially similar. Ex. 1005 at [90]. I have highlighted the noise response of each plot in green. A POSITA would plainly understand that these responses are not substantially similar. Ex. 2001 ¶ 44. Dr. Sayeed provides an additional annotated version of Brandstein’s Figure 5.3, reproduced below, which illustrates the speech direction and the noise direction as shown in green. We credit Dr. Sayeed’s testimony that with respect to Figure 5.3 above, the noise responses of the FBF and the BM (shown in green) are different. See id. ¶ 45. We also are persuaded by Dr. Sayeed’s testimony regarding Brandstein’s disclosure that:” slip op. at 30
- Expert testimonyPatent owner expert creditedDecided for patent owner
“IPR2023-01130, Paper 10 at 24. Likewise, Figure 5.3 of Brandstein undermines Petitioner’s contention that the virtual microphone noise responses are substantially similar. See Prelim. Resp. 17. We credit the testimony of Dr. Sayeed, who explains Brandstein’s Figure 5.3, which actually depicts the directivity of the cited GJBF’s top and bottom path unlike Figure 5.2, further shows that their responses to noise are not substantially similar. Ex. 1005 at [90]. I have highlighted the noise response of each plot in green. A POSITA would plainly understand that these responses are not substantially similar. Ex. 2001 ¶ 44. Dr. Sayeed provides an additional annotated version of Brandstein’s Figure 5.3, reproduced below, which illustrates the speech direction and the noise direction as shown in green. We credit Dr. Sayeed’s testimony that with respect to Figure 5.3 above, the noise responses of the FBF and the BM (shown in green) are different. See id. ¶ 45. We also are persuaded by Dr. Sayeed’s testimony regarding Brandstein’s disclosure that: As Chapter 5 does not disclose equations for the GJBF discussed in section 5.2, Fig. 5.3 would provide a POSITA’s only understanding of the actual noise responses of its FBF and BM outside of the above-cited disclosure that noise is attenuated in its FBF and not in its BM. This would further support a POSITA’s understanding that the top and bottom branches of Brandstein’s GJBF do not have substantially similar responses to noise. Id. ¶ 46.” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“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). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, Petitioner asserts that a person of ordinary skill in the art by June 27, 2007, would have had “a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 21 (citing Ex. 1003 ¶¶ 21–26). Dr. Johnson supports Petitioner’s position and further testifies that “work experience could substitute for formal education, and additional formal education can substitute for work experience.” Ex. 1003 ¶ 23. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 19 (citing Ex. 2001 ¶ 26). For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’080 Patent and the prior art of record.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,779,080 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · May 30, 2024 · IPR2024-00349 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–46 obvious over Brandstein or Brandstein and McCowan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“We agree with Patent Owner that Petitioner does not sufficiently explain why Brandstein’s responses of the GJBF’s top and bottom branches are substantially similar. See Pet. 34. Rather, Petitioner merely states that the “deep null reflects that subtracting the bottom branch from the top branch cancels the interference,” citing Dr. Johnson’s testimony. Id. (citing Ex. 1003 ¶ 104). Dr. Johnson’s testimony (Ex. 1003 ¶ 104), though, is entitled to little weight here because it merely repeats the Petition’s conclusory assertions without adding supporting evidence or technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Petitioner cites Figure 5.2 for its assertions about the branches. Pet. 34. But Figure 5.2 shows the overall directivity pattern for the entire GJBF, not the top and bottom branches. See Ex. 1005, Fig. 5.3. The top branch includes the FBF, and the bottom branch includes the BM. Pet. 24, 30. As discussed above, Figure 5.3 shows that the responses for the FBF and BM are different. See id. at 24, 30; Ex. 2001 ¶ 44. As Dr. Sayeed points out, Chapter 5 is a general overview of the GJBF, intended to be a tutorial, and the chapter does not further discuss the responses of the individual branches identified in the Petition. See Ex. 2001 ¶ 45; Ex. 1005, 8. Thus, Petitioner has not shown that, under its rationale based on the basic GJBF, Brandstein teaches or suggests “the second linear response to noise being substantially similar to the first linear response to noise, and the second linear response to speech being substantially dissimilar to the first linear response to speech,” as claimed.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We agree with Patent Owner that Petitioner does not sufficiently explain why Brandstein’s responses of the GJBF’s top and bottom branches are substantially similar. See Pet. 34. Rather, Petitioner merely states that the “deep null reflects that subtracting the bottom branch from the top branch cancels the interference,” citing Dr. Johnson’s testimony. Id. (citing Ex. 1003 ¶ 104). Dr. Johnson’s testimony (Ex. 1003 ¶ 104), though, is entitled to little weight here because it merely repeats the Petition’s conclusory assertions without adding supporting evidence or technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. [Ex. 10034 ¶¶ 21–26.] Work experience could substitute for formal education, and additional formal education could substitute for work experience. [Id.] Pet. 18. In its Preliminary Response, Patent Owner follows this proposed skill level. Prelim. Resp. 8. To determine whether to institute here, the Board also follows Petitioner’s proposed skill level.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,503,691 - Tp-Link Corporation Limited v. Netgear, Inc.Institution deniedPTAB · Mar 8, 2024 · IPR2023-01393 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–24 unpatentable over Morikawa or Serizawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary Response we conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’714 patent.” slip op. at 2
- BurdenDecided for patent owner
“Critically, though, Petitioner does not adequately show that Morikawa actually teaches FDD or receiving and transmitting data at the same time. We agree with Petitioner that Morikawa discloses separate receiver and transmitter units at each subscriber’s terminal, but Petitioner does not adequately explain how or why the fact that Morikawa has separate receiver and transmitter units would serve to teach that there is data transmission and reception at the same time. Dr. Ding’s Declaration offers little support. First, Dr. Ding’s Declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Dec. 21, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 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.”). In many instances, conclusory statements in the Petition cite to the same conclusory statements in the Ding Declaration. In one of the few statements in Dr. Ding’s testimony that goes beyond the language of the Petition, Dr. Ding states “[i]t would not make sense to view Morikawa as teaching one-way transmission at a time, because that would not support the most basic two-way communication” (Ex. 1002 ¶ 87), but Dr. Ding does not explain why that statement is true or cite evidence to support that opinion. To the contrary, both the Petition and the Ding Declaration cite evidence of another reference that supports two-way communication but only uses one band at a time: “the Mangal8 prior art distinguished during prosecution of the ’714 patent, which teaches two-way communication over one band at a time, whereby ‘the” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Petitioner that Morikawa discloses separate receiver and transmitter units at each subscriber’s terminal, but Petitioner does not adequately explain how or why the fact that Morikawa has separate receiver and transmitter units would serve to teach that there is data transmission and reception at the same time. Dr. Ding’s Declaration offers little support. First, Dr. Ding’s Declaration largely mirrors the Petition and lacks sufficient additional explanation. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Dec. 21, 2022) (precedential) (determining that declaration testimony is entitled to little weight when the testimony merely repeats conclusory statements from the petition); 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.”). In many instances, conclusory statements in the Petition cite to the same conclusory statements in the Ding Declaration. In one of the few statements in Dr. Ding’s testimony that goes beyond the language of the Petition, Dr. Ding states “[i]t would not make sense to view Morikawa as teaching one-way transmission at a time, because that would not support the most basic two-way communication” (Ex. 1002 ¶ 87), but Dr. Ding does not explain why that statement is true or cite evidence to support that opinion. To the contrary, both the Petition and the Ding Declaration cite evidence of another reference that supports two-way communication but only uses one band at a time: “the Mangal8 prior art distinguished during prosecution of the ’714 patent, which teaches two-way communication over one band at a time, whereby ‘the” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a [b]achelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10 (citing Ex. 1002 ¶¶ 53–56). Patent Owner asserts that “a person of ordinary skill in the art would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data communication, or wireless networking systems.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 25). On the current record, we do not discern a meaningful difference between the parties’ proposals, and we apply Petitioner's proposed level of ordinary skill for the purposes of this Decision. slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,936,714 - Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01153 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 30, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 23; Prelim. Resp. 6. Therefore, we do not construe the claims. D.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357
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.