- PTAB · Dec 3, 2025 · IPR2025-01016 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on all challenged claims 1–13 and all petition grounds, finding a reasonable likelihood that Jurik anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), 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.” Considering the Petition as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’373 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’373 patent on the grounds stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art (“POSITA”) at the time of the assumed effective filing date (March 30, 2023), would have had at least a B.S. degree in mechanical or electrical engineering and would have had at least two years of practical experience designing lighting systems. Alternatively, a POSITA would have at least two years of undergraduate training in a physical science (e.g., engineering or physics) and at least four years of practical experience designing lighting systems. Pet. 10 (citing Ex. 1004 ¶¶ 31–32). Patent Owner did not file a Preliminary Response. For the purposes of this Decision, we apply Petitioner’s currently uncontested definition except for the term “at least” because it may cause ambiguity resulting in potentially encompassing those with more than ordinary skill in the art. With that qualification, Petitioner’s proposal appears consistent with the problems addressed in the ’373 patent and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner did not file a Preliminary Response. We determine, at this stage of the proceeding, that we need not construe any claim terms to resolve the controversy before us. 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))). The parties are free to address the construction of any claim term in subsequent authorized briefing during trial. If either party chooses to present claim construction arguments, the arguments should be in a separately delineated portion of the brief labelled accordingly.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). However, this is not an ipsissimis verbis test, i.e., identity of terminology is not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 11,988,373 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret 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).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe 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.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · Oct 6, 2025 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Institution
Instituted review of claims 1–11, 18–20, 23–25, and 28 on all petitioned grounds, based on a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’539 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’539 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” Prelim. Resp. 22. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysisbelow. See Okajima, 261 F.3d at 1355 (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no construction should be necessary to institute this petition.” Pet. 20. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 22. Having considered the record, we determine that, at this stage, no express claim construction is necessary for any claim terms. 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))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and “how” the references would have been combined. As the Petition explains, Krummacher discloses radiation scattering particles having a size range of 50 to 1000 nm. See Pet. 26 (citing Ex. 1107 ¶ 39). Petitioner further explains that a person of ordinary skill in the art would use Stokes teachings to further refine that size range to optimize the particle size to preferentially scatter blue light. See id. at 26–27. Petitioner further provides reasons, suggested in Stokes itself, why a person of ordinary skill would have made this modification to Krummacher. See id. at 27–28 (citing Ex. 1108, 7:17–26; Ex. 1102 ¶ 128). Petitioner provides sufficient evidence that such a particle size selection was within the level of skill in the art at the time of the invention. See Ex. 1102 ¶¶ 122–128, 140–144; Ex. 1108, 7:1– 17; Ex. 1124 ¶¶ 80–81. We note that we have reviewed the testimony of Patent Owner’s expert, Dr. Schubert, but this testimony does not, at this stage, diminish the weight we give to Petitioner’s expert. Thus, we find that Petitioner has shown sufficiently that the combination of Krummacher and Stokes accounts for this limitation and that a person of ordinary skill would have combined the references in the manner suggested with a reasonable expectation of success.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’539 patent. Accordingly, we institute an inter partes review.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,614,539 - PTAB · Sep 25, 2025 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Director review
The Board instituted inter partes review of claims 1–7, 11–14, and 16–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Petitioner filed a request for Director Review of the Decision granting Patent Owner’s request for discretionary denial and denying institution (“Decision,” Paper 10) and Patent Owner filed an authorized response. See Paper 121 (“DR Request”); Paper 13 (“Patent Owner Response”). The Director granted the DR Request and referred the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” Paper 14 (“Order Granting Director Review”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”) We therefore institute inter partes review as to all of the challenged claims of the ’228 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 584 U.S. 357, 364–65 (2018); 37 C.F.R. § 42.108 (a)” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, Patent Owner did not file a Preliminary Response and thus does not respond at this time. Petitioner’s description is consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our Decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a “single caching agent,” which is recited in claim 1 here. ’1344 IPR, Paper 31 (“Final Written Decision”), 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18.” slip op. at 14
Claim constructioncites KSR · NautilusPatents in suitUS 8,984,228 - PTAB · Jul 29, 2025 · IPR2025-00404 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–17, 19, 26, 28–41, and 43–46 on both obviousness grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2024) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the time of the alleged invention “would have been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related field, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 13” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Petitioner identifies the term “client side modem functionality” in claim 5 for construction. Pet. 14. Patent Owner does not address the construction of this term. See Prelim. Resp. 4–6. We determine that we do not need to construe the term “client side modem functionality” for purposes of this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues that the terms “first communication technology,” “second communication technology,” and “third communication technology” should “be understood to have their plain meaning wherein each of these recited communication technologies is a different communication technology.” Prelim. Resp. 5. For purposes of this decision, we will apply Patent Owner’s understanding of these terms. However, we note that Patent Owner does not explain what it means by a “different” communication technology, or how to determine whether two communication technologies qualify as “different.” Id. at 5–6. The parties may wish to explore the meaning of this term further during the trial.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,413,502 - Google LLC v. Brodti Inc.InstitutedPTAB · Jul 24, 2025 · IPR2025-00472 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 10, and 19 are obvious over Nicholas, Laidlaw, Mayadas, and Error.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 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). 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors 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) (citation omitted). Considering the subject matter of the ’898 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1002 ¶¶ 9–12), we apply the level of skill set forth above.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner submits that all terms in the Challenged Claims should be given their plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required to resolve this case. Pet. 6 (“Petitioner does not believe express claim construction is necessary to resolve this Petition.”). Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues the skilled artisan would have had various rational reasons for combining the teachings of these four references, and would have had a reasonable expectation of success in doing so. See, e.g., Pet. 18–21 (discussing reasons to combine Nicholas and Laidlaw and expectation of success in doing so), 33–37 (discussing reasons to combine Nicholas and Mayadas and expectation of success in doing so), 44–45 (discussing reasons to combine Nicholas, Laidlaw, Mayadas, and Error and expectation of success in doing so). Based on the record before us, we find Petitioner sufficiently shows that the combination of Nicholas, Laidlaw, Mayadas, and Error would have taught or at least fairly suggested to the skilled artisan the limitations of claim 1.4 Thus, for the reasons stated in the Petition (Pet. 8–51), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that independent claim 1 would have been unpatentable as obvious over the combination of Nicholas, Laidlaw, Mayadas, and Error.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,898 - PTAB · Jun 6, 2025 · IPR2024-01457 · APJ Stephen E Belisle · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Huang for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 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). 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). Applying those standards, and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review as to all Challenged Claims of the ’194 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors 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) (citation omitted). Considering the subject matter of the ’194 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 48), we apply the level of skill set forth above.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 13. Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Pet. 34; see Ex. 1005, Fig. 2. Based on the record before us, we find Petitioner sufficiently shows that Huang teaches or at least fairly suggests to the skilled artisan each of remaining limitations [1.1] through [1.6.2] for the reasons set forth by Petitioner, as outlined below with reference to annotated Figure 2.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,148,194 - PTAB · Jun 6, 2025 · IPR2024-01456 · APJ Amber L Hagy · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7–9, and 13–15 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable over the cited art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’579 patent. We institute review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not filed a preliminary response, and therefore Petitioner’s assessment is unchallenged at this stage. For purposes of this institution decision, and based on the present record including the disclosure in the ʼ579 patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 18). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ579 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 17. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. At this stage, and for purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed the arguments and evidence submitted by Petitioner. At this stage, and on this record, we determine that Petitioner has shown sufficiently for institution that the prior art teaches or suggests these limitations.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,450,579 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually evidenced by the references themselves. 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). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687 - Mediatek Inc. v. Daedalus Prime LLCInstitutedPTAB · May 19, 2025 · IPR2025-00100 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all petitioned grounds, finding a reasonable likelihood of prevailing and declining discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner or refute the testimony by Dr. Martin. On this record, we find for the reasons given that Petitioner has sufficiently demonstrated a motivation to combine Bugiel and Chou and to further combine those references with Tkacik, TLS-1.2, or both, with a reasonable expectation of success. Pet. 8– 13.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Bugiel with Chou and with Chou and TLS-1,2. Pet. 8. Petitioner asserts that “[i]t would have been obvious to implement Bugiel’s system using Chou’s HSM 20.” Id. Petitioner explains, “[a person of ordinary skill] would have understood both Chou and Bugiel relate to secure communication using cryptographic keys for encryption and decryption.” Id. Dr. Martin testifies that “[g]iven the express teachings in Bugiel and the ubiquity of the SSL/TLS communication protocol, a [person of ordinary skill] would have been motivated to review the relevant SSL/TLS protocol for more details regarding how to implement the TLS Handshake Protocol for generating cryptographic keys based on cryptographic key exchange.” Martin Decl. ¶ 77. He further testifies that a person of ordinary skill “would have understood that the SSL/TLS processes contemplated by Bugiel and TLS- 1.2 require hardware components.” Id. ¶ 78. He testifies that “[b]ecause Chou teaches an apparatus with hardware components that satisfy the requirements specified by Bugiel and TLS-1.2, a [person of ordinary skill] would have found it obvious to implement the techniques described in Bugiel, including TLS-1.2 as required by Bugiel, using Chou’s SOC apparatus.” Id. ¶ 80. He testifies that a person of ordinary skill “would have understood that the combination of Bugiel and Chou, and Bugiel and TLS-1.2 with Chou, would have been nothing more than combining known prior art elements according to understood methods to perform the well-known TLS handshake process using a secure hardware environment. This would have yielded predictable results in establishing secure, encrypted communication between a client mobile device and a server. A [person of ordinary skill] would have had an expectation of success in the result, as Bugiel contemplates using TLS-1.2 communication protocols and secure hardware to store protected keys and to encrypt and decrypt data, as taught by Chou.” Id. ¶ 81. Dr. Martin provides additional reasons motivating the combination of Bugiel and Chou, and Bugiel, Chou, and TLS-1.2. Id. ¶¶ 82–83.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv, Paper 11 at 5–6. “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. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent “would have had at least a bachelor’s degree in electrical engineering, computer science, computer engineer, or a similar field, and approximately two years of experience in a field related to cryptography and secure communications between network devices,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 3–4 (citing Martin Decl. ¶¶ 66–68). At this stage, Patent Owner does not respond to this contention. For the purpose of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’838 patent specification and the asserted prior art.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,887,838
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.