- 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 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution
The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- BurdenDecided for patent owner
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,557,788 - 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 - Darfon Electronics Corp. v. Michael ShipmanInstitution deniedPTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution
The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (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 slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines 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(a)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2
Discretionary denialPatents in suitUS 10,942,581 - Samsung Electronics America, Inc. v. Proxense, LLCInstitution deniedPTAB · Feb 28, 2022 · IPR2021-01448 · APJ David C Mckone · IPR · Institution
Denied IPR of claims 1–9 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). 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 decline to institute an inter partes review of the ’989 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“1. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in computer or electrical engineering (or an equivalent degree) with at least three years of experience in the field of encryption and security (or an equivalent)” and “that more education could compensate for less experience and vice versa.” Pet. 4. Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“artisan “would have been motivated to modify Scott’s system such that authentication is performed by an external third-party trusted authority possessing a list of device ID codes that unique identify legitimate PIDs, as taught in Lapsley, to improve efficiency and flexibility of the system by consolidating ID codes to a central location at a secure third-party agent.” Id. at 26 (citing Ex. 1003 ¶ 53). Dr. Wolfe repeats this argument in his testimony, but does not state the basis for his opinion, rendering it of little value. See 37 C.F.R. § 42.65(a). Citing to Lapsley, Petitioner argues that a skilled artisan “would have recognized the benefit in reducing the risk of fraud by improving security and authentication by using a trusted third-party agent to verify devices involved in a transaction.” Id. (citing Ex. 1007 ¶¶ 8, 9, 27, 29). Petitioner argues that a skilled artisan “would have further understood that it was common to have an ATM that is not owned by a bank use the bank as a third party for authorization and it was common for a store to use a bank or credit card exchange as a third party for authorization.” Id. at 26–27. Petitioner does not cite any evidence for this argument.” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner. The plain meaning of “third-party trusted authority” suggests an entity or party separate from the principal parties to a transaction. See e.g., THE AMERICAN HERITAGE COLLEGE DICTIONARY 1433 (4th ed. 2004) (“third party n. . . . 2. One other than the principals involved in a transaction.”) (Ex. 3002). 4 Neither Petitioner nor Patent Owner has included in our record the file history of the ’730 patent or the Cryptographic Libraries for Developers book. This is consistent with the description in the Specification. For example, Figure 3, reproduced above, depicts trusted key authority 320 as an entity separate from biometric key 100, authentication module 310, and application 330. As the Specification states, “[t]rusted key authority 320 is a third-party authority that is present in some embodiments to provide enhanced security.” Ex. 1001, 6:59–61. Examples of trusted key authorities include “a government official, a notary, and/or an employee of a third party which operates the trusted key authority, or another form of witness.” Id. at 7:56–61. Petitioner’s citations to the applicant’s statement during the prosecution of the parent ’730 patent are also consistent with a third-party trusted authority being an entity separate from the principal parties to a transaction, as is the Declaration of Dr. Nielson. Ex. 2001, 6–8; Ex. 2003 ¶¶ 70–74. Thus, we construe “third-party trusted authority” to mean a trusted authority that is an entity separate from the parties to a transaction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,698,989 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01154 · APJ Bryan F Moore · IPR · Institution
The Board denied institution for claims 1–27 because Petitioner did not show a reasonable likelihood that either asserted Jungck-based obviousness combination rendered the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that the combination of Jungck and Wood meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” 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 Petition’s avoidance of the operation of edge caches when edge caches are important in the processing of traffic flowing across the boundary undermines this ground of the Petition. If Petitioner wished to rely on an embodiment or configuration in which the edge caches were irrelevant, the edge caches were redundant to the edge server, or the edge caches were unnecessary, it was incumbent upon Petitioner to explain sufficiently how and why that was the case. Petitioner was aware of the edge caches because it appears to have omitted all references to them in the Petition yet did not explain why this was done. Additionally, although Petitioner’s declarant does include references to edge caches, its declarant also does not explain sufficiently the relevance of those edge caches. Ex. 1004 ¶¶ 148, 212, 214, 215, 227, 323. Additionally, Petitioner’s references to collateral estoppel do not relieve Petitioner from the burden to describe its contentions regarding obviousness in the Petition.” slip op. at 15
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Our reviewing court has held that “[c]ollateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351–1352 (Fed. Cir. 2018) (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)). “It is well established that collateral estoppel, also known as issue preclusion, applies in the administrative context.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (citations omitted); Webpower, Inc. v. WAG ACQUISITION, LLC, Case IPR2016- 01239, Paper 21 at 26–28 (PTAB Dec. 26, 2017). “Issue preclusion [i.e., collateral estoppel] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). Patent Owner points out that the claims at issue in IPR2018-01443, 1444, 1513 (“prior IPRs”) did not include the “entire boundary” or “all traffic” limitations. Prelim. Resp. 26–27, 32, 44. We agree. Collateral estoppel does not apply because there are differences between the claim limitation at issue here and the adjudicated claim limitations at issue in the prior IPRs. See In re Freeman, 30 F.3d at 1465; accord MaxLinear, Inc., 880 F.3d at 1377–1378; cf. In re Arunachalam, 709 F. App’x 699, 702 (Fed. Cir. 2017) (unpublished) (finding collateral estoppel applies to an adjudicated claim that is not “materially different” than the adjudicated claims).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner requests that the preamble of independent claims 1, 8, and 15 be treated as limiting. Prelim. Resp. 16–17. These preambles provide antecedent basis for “packet security gateway,” “boundary,” “network,” and “one or more other networks.” Id. at 16 (citing Ex. 1001, 20:64–21:2, 22:13–18, 23:35–42). The preambles also recite the “plurality of packet security gateways that collectively provide an entire interface across a boundary of a [protected] network,” which is “essential to understand” the “all traffic” limitation in the body of these claims and thus ‘“give life, meaning, and vitality”’ to the claims. Id. (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted)). The preambles provide the context for the body of the independent claims by defining the arrangement of the “plurality of packet security gateways” relative to the “boundary” of the protected network and thus the basis for applying “packet filtering rules . . . to all network traffic traversing the boundary.” Id. (citing Ex. 1001, 20:64–21:8). The “entire interface” limitation also was relied on during prosecution of the parent ’437 Patent’s claims to distinguish them from the prior art. Id. at 16–17 (citing Ex. 2008, 254–61; Catalina, 289 F.3d at 808–09). Petitioner does not dispute the preambles are limiting. Pet. 18–21, 37. For, the reasons above, we construe the preambles of independent claims 1, 8, and 15 as limiting. After review of the current record, we conclude that, other than determining the preambles are limiting, no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,785,266 - SAP America, Inc. v. Express Mobile, Inc.Institution deniedPTAB · Jan 18, 2022 · IPR2021-01144 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution because SAP did not show a reasonable likelihood that claims 1, 3, 5–7, 11, 12, 14, 16–18, 21, and 22 were obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “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). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’755 patent. Accordingly, we do not institute an inter partes review of claims 1, 3, 5–7, 11, 12, 14, 16–18, 21, and 22 of the ’755 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 17–18 (citing Ex. 1004 ¶¶ 5–20, 31–34). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. at 18 (citing Ex. 1004 ¶¶ 5–20, 31–34). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’755 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the Board need not construe any claim term “[b]ecause the prior art asserted herein discloses embodiments within the Challenged Claims’ indisputable scope.” Pet. 18. Petitioner lists the constructions of certain claim terms in co-pending district-court litigations, but contends that “the Board need not construe these terms to resolve this controversy, as any reasonable construction reads on the prior art.” Id. at 18–20. Patent Owner does not propose construing any claim terms. See generally Prelim. Resp. Because our determination below is not impacted by Petitioner’s proposed claim constructions, we need not expressly construe any claim term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner. As we stated previously, Huang discloses that each vendor-specific object is mapped to the generic web service object by a definition stored in an XML mapping file. Ex. 1007 ¶¶ 44, 74. Huang discloses that WSObjectMapping 123 converts generic WS Object Model 130 to a vendor-specific adaptor, such as Siebel Web Service Adaptor 134 for interacting with Siebel Web Service 140. Ex. 1007 ¶¶ 44, 57. Contrary to Petitioner’s contention, Huang does not necessarily provide the claimed “input symbolic name” to the web service. Instead, Huang converts the input symbolic name to a vendor-specific adaptor, and uses the vendor specific adaptor to interact with the web service. Ex. 1007 ¶¶ 44, 57. On this record, we are not persuaded that Petitioner has sufficiently shown that the combination of Huang and Angelov teaches “the device provides . . . [the] corresponding input symbolic name to the web service” as recited in claim 1.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,063,755 - SAP America, Inc. v. Express Mobile, Inc.Institution deniedPTAB · Jan 18, 2022 · IPR2021-01145 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because SAP did not show a reasonable likelihood that claims 1, 3, 5–7, 11–13, 15, 17, 19–21, and 24–27 were obvious over Huang-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “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). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’287 patent. Accordingly, we do not institute an inter partes review of claims 1, 3, 5–7, 11–13, 15, 17, 19–21, and 24–27 of the ’287 patent on the grounds asserted in the Petition.” slip op. at 2
- BurdenDecided for patent owner
“We agree with Patent Owner. As we stated previously, Huang discloses that each vendor-specific object is mapped to the generic web service object by a definition stored in an XML mapping file. Ex. 1007 ¶¶ 44, 74. Huang discloses that WSObjectMapping 123 converts generic WS Object Model 130 to a vendor-specific adaptor, such as Siebel Web Service Adaptor 134 for interacting with Siebel Web Service 140. Ex. 1007 ¶¶ 44, 57. Contrary to Petitioner’s contention, Huang does not necessarily provide the claimed “input symbolic name” to the web service. Instead, Huang converts the input symbolic name to a vendor-specific adaptor, and uses the vendor specific adaptor to interact with the web service. Ex. 1007 ¶¶ 44, 57. On this record, we are not persuaded that Petitioner has sufficiently shown that the combination of Huang and Angelov teaches “the device provides . . . [the] corresponding input symbolic name to the web service” as recited in claim 1.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundDecided for patent owner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). What the prior art teaches and whether it teaches toward or away from the claimed invention are determinations of fact. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Paragraph 74 of Huang, in its entirety, discloses One approach to invoking the web service object would be to call vendor-specific objects directly from applications. That approach requires the application to know details about each vendor specific object, and ties the application to a particular web services vendor. Therefore a generic web services object is introduced. Each vendor-specific object is mapped to the generic web services object by a definition stored in an XML mapping file. Applications interact with the generic web services object and need not contain hard-coded dependencies on vendor specific objects. Ex. 1005 ¶ 74. In this paragraph, Huang is discussing the problem with calling a vendor-specific object directly from an application, and describing a solution of mapping each vendor-specific object to a generic web services object. Id. Huang teaches that with this solution, applications need not contain hard-coded dependencies on vendor specific objects. Id. Huang teaches that this solution allows the designer and the player to be vendor-independent and work with multiple web services without the need for vendor-specific code in the designer, player, or internet browser. Id. ¶ 57. A person of ordinary skill, upon reading Huang’s teaching that mapping each vendor-specific object to a generic web services object allows the designer and player to be vendor-independent, whereas calling vendor-specific objects without such mapping does not, would be led in a direction divergent from the path of “the device provides . . . [the] input symbolic name to the web service” that was taken by the applicant. Fulton, 391 F.3d at 1201. slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 20 (citing Ex. 1004 ¶¶ 5–20, 31–34). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. (citing Ex. 1004 ¶¶ 5–20, 31–34). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’287 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,471,287 - Google LLC v. Express Mobile, Inc.Institution deniedPTAB · Oct 4, 2021 · IPR2021-00711 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 7, and 11 were obvious over Huang and Angelov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing the Declaration of Dr. Chatterjee, Petitioner contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 7–8 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. at 8 (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’044 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“unpatentable under 35 U.S.C. § 103(a) as obvious over Huang in view of Angelov. Pet. 13–83. In particular, Petitioner contends that the combination of Huang and Angelov teaches or suggests each and every limitation of the challenged claims, and that a person of ordinarily skill in the art would have had a reason to combine the disclosures of the prior art. Id. Patent Owner opposes, relying on the Declaration of Kevin C. Almeroth, Ph.D. (Ex. 2001). Prelim. Resp. 4–13. In particular, Patent Owner argues that the prior art fails to teach or suggest three claim limitations: (1) “the device provides the user provided one or more input values and corresponding input symbolic name to the web service,” id. at 7–11; (2) “the web service utilizes the input symbolic name and the user provided one or more input values,” id. at 12; and (3) “the player receives the output symbolic name,” id. at 12–13. We address each of these limitations below. 1. “the device provides the user provided one or more input values and” slip op. at 13
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,928,044 - Google LLC v. Express Mobile, Inc.Institution deniedPTAB · Oct 4, 2021 · IPR2021-00709 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 7, and 11 would have been obvious over Huang and Angelov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and associated evidence, we do not institute an inter partes review as to the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing the Declaration of Dr. Sandeep Chatterjee, Ph.D., Petitioner contends that an ordinarily skilled artisan at the time of the invention “would have had a bachelor’s degree in electrical engineering, computer science, or the equivalent thereof, and at least two years of experience with web services.” Pet. 5–6 (citing Ex. 1002 ¶¶ 15–16). Petitioner also contends that “[m]ore education can supplement practical experience, and vice-versa.” Id. at 6 (citing Ex. 1002 ¶¶ 15–16). Patent Owner does not propose an alternative assessment of the level of ordinary skill in the art. See generally Prelim. Resp. assessment of the level of ordinary skill in the art as it is consistent with the ’755 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. DISCRETIONARY ISSUES Because we deny institution on the merits, we do not reach the discretionary issues raised by Patent Owner. See Prelim. Resp. 16–35.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“where said Player is a device-dependent code.” Petitioner contends that, although Huang and Angelov do not explicitly disclose that the Application Designer is configured to produce a player, it would have been obvious to implement such a feature. Pet. 51. According to Petitioner, the designer of Huang is configured to generate a software application executed by a player, and this shows that a person of ordinary skill would have found it predictable to generate the player itself, because the player is also software. Pet. 52. Petitioner contends that, because Huang does not explicitly disclose what produces the player, a person of ordinary skill would have leveraged existing resources disclosed in Huang that already produce other software. Pet. 52. According to Petitioner, producing device-dependent code was well known and advantageous. Pet. 52–54. Patent Owner contends that creating and saving applications as XML definitions in a database as taught by Huang is significantly simpler than generating Java Server Pages (JSP) or JavaScript that produce a player. Prelim. Resp. 15. Patent Owner contends that Huang does not disclose using the Application Designer to generate JSP or JavaScript, nor does Huang disclose how to do so. Prelim. Resp. 15. Patent Owner contends that Petitioner does not explain how any resource in Huang could be leveraged to produce a player. Prelim. Resp. 15. device-dependent code was well-known because such knowledge is already shown by Huang’s disclosure of a player which may be JSP and may include JavaScript. Ex. 1007 ¶ 41. However, the player disclosed by Huang is sent from server 120 to browser 101 (which executes the player and the Application Designer), not produced by the Application Designer. Id.; see Pet 51 (“Huang does not explicitly disclose what produces [the] player.”). Petitioner has not sufficiently shown that a person of ordinary skill who could produce applications using the designer of Huang could also produce a player using the same designer. We agree with Patent Owner that Huang does not disclose how the designer or any other resource of Huang would produce a player, and Petitioner does not sufficiently explain how any resource in Huang could be leveraged to do so. On this record, Petitioner has not sufficiently shown that the combination of Huang and Angelov teaches “an authoring tool configured to . . . produce a Player, where said Player is a device-dependent code.”” slip op. at 12
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,063,755
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.