- Apple Inc. v. Ferid AllaniInstitution deniedPTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.
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). 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). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal 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). B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,271,877 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Apr 29, 2025 · IPR2025-00182 · APJ Scott B Howard · IPR · Institution
The Board denied institution of IPR on claims 1–20, exercising § 314(a) discretion because this was an unnecessary third parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here.” slip op. at 7
Discretionary denialPatents in suitUS 11,785,275 - Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Apr 29, 2025 · IPR2025-00181 · APJ Scott B Howard · IPR · Institution
The Board denied institution on claims 1–20, exercising § 314(a) discretion because Petitioner’s second parallel petition was unnecessary.
RulingsInstitution decision- Parallel petitionsDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here.” slip op. at 7
Discretionary denialPatents in suitUS 11,785,275 - SAP America, Inc. v. Cyandia, Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01496 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution of inter partes review of claims 1–11, 13, 16, 18, and 31–34 under § 314(a), after weighing the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Although Petitioner has filed a Sotera stipulation, we agree with Patent Owner that the stipulation has limited practical effect in reducing the overlapping efforts here and in the Litigation. Petitioner contends in the district court that the system described in the WebSphere materials renders at least some of the challenged claims invalid. Because Petitioner cannot challenge claims in this proceeding based on a public use or sale of the WebSphere system, Petitioner’s Sotera stipulation would not prevent Petitioner from asserting an invalidity defense in the district court based on the public use or sale of the WebSphere system. We understand that, in the Litigation, Petitioner has relied upon the WebSphere publications as prior art, presumably as evidence describing the WebSphere system that was publicly used and on sale. Regardless of any decision rendered in this proceeding on the patentability of the challenged claims based on the WebSphere printed publications, Petitioner may continue to press an invalidity defense based on the same evidence presented here. Additionally, it appears that all claims being contested as invalid in the Litigation are also subject to a challenge in the Petition. The narrowing of asserted claims in the Litigation, if it occurs, will streamline the parties’ overall dispute on invalidity if we decide to discretionarily deny institution. So, a majority of the parties’ work that would be done here will also be required in the Litigation regardless of whether we institute review. Accordingly, we do not consider the presence of the Sotera stipulation in our case to ensure that inter partes review would be a “true alternative” to the Litigation. On balance, we find that Fintiv Factor 4 weighs in favor of discretionarily denying institution. E. Fintiv Factor 5: Whether Petitioner Is Defendant in District Court” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We decline to characterize the merits as sufficiently strong to overcome the other factors. That is not to say we view Petitioner’s case as marginal or close. Rather we determine that the other factors are more persuasive here. Although Petitioner’s challenge is straightforward and definitely meets the standard for institution, even when balanced against Patent Owner’s counterarguments, we do not find the challenge to be sufficiently strong to outweigh the evidence discussed above in connection with Fintiv Factors 1–5. When reviewing all other circumstances, we find that Fintiv Factor 6 is neutral. G. Conclusion” slip op. at 10
Discretionary denialPatents in suitUS 8,595,641 - SAP America, Inc. v. Cyandia, Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01495 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution on claims 1–10, 13, 17, 18, and 36–42 under § 314(a), finding the Fintiv factors holistically favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“Although Petitioner has filed a Sotera stipulation, we agree with Patent Owner that the stipulation has limited practical effect in reducing the overlapping efforts here and in the Litigation. Petitioner contends in the district court that the system described in the WebSphere materials renders at least some of the challenged claims invalid. Because Petitioner cannot challenge claims in this proceeding based on a public use or sale of the WebSphere system, Petitioner’s Sotera stipulation would not prevent Petitioner from asserting an invalidity defense in the district court based on the public use or sale of the WebSphere system. We understand that, in the Litigation, Petitioner has relied upon the WebSphere publications as prior art, presumably as evidence describing the WebSphere system that was publicly used and on sale. Regardless of any decision rendered in this proceeding on the patentability of the challenged claims based on the WebSphere printed publications, Petitioner may continue to press an invalidity defense based on the same evidence presented here. Additionally, it appears that all claims being contested as invalid in the Litigation are also subject to a challenge in the Petition. The narrowing of asserted claims in the Litigation, if it occurs, will streamline the parties’ overall dispute on invalidity if we decide to discretionarily deny institution. So, a majority of the parties’ work that would be done here will also be required in the Litigation regardless of whether we institute review. Accordingly, we do not consider the presence of the Sotera stipulation in our case to ensure that inter partes review would be a “true alternative” to the Litigation. On balance, we find that Fintiv Factor 4 weighs in favor of discretionarily denying institution. E. Fintiv Factor 5: Whether Petitioner Is Defendant in District Court” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Institution of an inter partes review is authorized by statute when “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).” slip op. at 2
Discretionary denialPatents in suitUS 8,578,285 - SAP America, Inc. v. Cyandia, Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01432 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 under § 314(a) based on the Fintiv factors and copending district-court litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“overcome the other factors. That is not to say we view Petitioner’s case as marginal or close, rather we determine that the other factors are more persuasive here. Although Petitioner’s challenge is straightforward and definitely satisfies the institution standard, even when balanced against Patent Owner’s counterarguments, we do not find the challenge to be sufficiently strong to outweigh the evidence discussed above in connection with Fintiv factors 1–5. When reviewing all other circumstances, we find that factor 6 is neutral.” slip op. at 10
- 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 . . . 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) (2018). “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) (2021).” slip op. at 2
Discretionary denialPatents in suitUS 8,751,948 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution deniedPTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,010,330 - Apple Inc. v. Mullen Industries LLCInstitution deniedPTAB · Jun 7, 2023 · IPR2023-00098 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood of proving claims 1–35 unpatentable, including the limitation requiring asking the requesting device whether to request access rights.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“3. Conclusion Regarding Claim 1 We determine Petitioner has not shown a reasonable likelihood that it would prevail in its challenge to independent claim 1.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering or a similar degree with one or two years of experience with wireless networks and devices, as well as with GPS or location-related technology/services, as well as familiarity with devices such as cell phones and personal digital assistants (“PDAs”) as well as wireless positioning technologies such as GPS, triangulation, or trilateration. Pet. 7 (citing Ex. 1021 ¶ 43). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any explicit claim constructions. Pet. 8; see generally Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See 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)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Contrary to Petitioner’s arguments, though, neither Sheha nor Ganesh discloses or suggests asking the requesting device if location access rights are to be requested from the target device. Sheha teaches that “a [requesting] user can initiate a position request” and “[t]he server queries the [target user] for permission on whether the position request can be granted.” Ex. 1041, 5:24–31. Sheha does not teach asking the requesting user if location access rights are to be requested.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,635,540 - Apple Inc. v. Mullen Industries LLCInstitution deniedPTAB · May 15, 2023 · IPR2023-00117 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 42–72 were unpatentable over either asserted § 103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering, or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants (‘PDAs’) and wireless positioning technologies such as GPS.” Pet. 9 (citing Ex. 1021 ¶¶ 42–45). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any explicit claim constructions, and asserts that “[t]he claim terms of the ’117 Patent are construed under the Phillips standard, considering the plain meaning of the claim terms to a person of ordinary skill in the art, in light of the language of the claims, the specification, and the file history.” Pet. 9. Patent Owner too does not propose any explicit claim constructions. See Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“that “a user can initiate a position request” from a remote server. Pet. 29 (citing Ex. 1041, 5:24–29, 11:55–58, claims 47, 54; Ex. 1021-7 ¶ 131). Petitioner cites the same disclosure, though, to argue “Sheha discloses requesting access rights from a wireless device” for limitation 42.e and 42.f. Pet. 29–30, 32 (citing Ex. 1041, 5:21–32; Ex. 1021-7 ¶¶ 132–136). To be sure, the cited portion of Sheha refers to only a single act performed by the requesting user: “a user can initiate a position request.” Ex. 1041, 5:24–25. We agree with Patent Owner that the cited portion of Sheha does not teach or suggest separate steps of a user requesting a location and the same user requesting location access rights. Petitioner’s reliance on Ganesh does not cure that deficiency. Petitioner and Mr. Williams cite Ganesh for its teachings of a “denial webpage” which presents to the user an option to receive the requested location at a later time. Pet. 30–31 (citing Ex. 1049, 6:33–49, Fig. 6; Ex. 1021–7 ¶ 134 (stating “Ganesh . . . illustrates examples of such conventional functionality of providing an option to request access rights via a display screen”)). Ganesh, however, does not address requesting location access rights; Ganesh describes an access denial web page provided following an unsuccessful attempt to obtain location information that asks whether the user would like to receive the location information at a later time, not prompting the user to request location access rights. Ex. 1049, 6:33–49, Fig. 6. In other words, neither Sheha nor Ganesh teaches or suggests displaying to a user an option to request location access rights, as a separate step from requesting a location of a second wireless device from a server. Thus, based on the evidence of record, we determine the Petitioner has not adequately shown that a person of ordinary skill would have combined Sheha and Ganesh to arrive at the claimed invention without improper hindsight.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117 - LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293
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.