- 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 · Jun 23, 2025 · IPR2025-00260 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1 and 11–14 on all asserted grounds and consolidated the proceeding with IPR2024-01357.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In our Institution Decision in IPR2024-01357, we analyzed claim 1 of the ’678 patent in light of Basin-2007 and Basin-2005. ’1357 IPR, Paper 17, 23–28. We concluded, after reviewing the arguments presented there, that “Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” Id. at 28. In this proceeding, Petitioner has presented a challenge to claim 1 based on those same references that it represents is a “verbatim” copy of its previous challenge to claim 1 in the ’1357 IPR. Pet. 1–2, 28–35. Petitioner supports its challenge with expert testimony. Ex. 1002 ¶¶ 107–125.7 Patent Owner has not submitted a response on the merits of this challenge. For the purposes of this Decision, and for the reasons given in the Petition, we adopt the analysis in our Institution Decision in the ’1357 IPR (at pp. 23–28), where we determined that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Basin-2005 and Basin-2007. Turning now to Petitioner’s challenge to claim 11, Petitioner relies on Basin-2007 and Stokes for the particle size limitations added to claim 1 by that dependent claim. Pet. 35–39. Thus, Petitioner asserts that “Basin-2007 discloses a light scattering material with an average TiO2 particle size that is ‘sub-micron’ (less than 1000 nm).” Id. at 37 (citing Ex. 1005 ¶ 5). 7 Exhibit 1002 appears to be a duplicate copy of Dr. Doolittle’s declaration from the ’1357 IPR. Petitioner concludes, “Basin-2007 renders obvious claim 11 by literally disclosing the selection of average particle sizes that preferentially scatter blue light.” Id. Further, “to the extent that the claim language ‘an average particle size that is selected such that [it preferentially scatters blue light]’ requires an average particle size selected for that reason (rather than an average particle size that leads to that outcome), this claim element is rendered obvious by Stokes.” Id. at 38 (citing Doolittle Decl. ¶ 45) (alterations in original). Petitioner explains that “Stokes explicitly discloses the selection of an average particle size ‘such that the particles preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.’” Id. at 38 (citing Ex. 1008, 7:1–4) (alterations in original). Petitioner provides a motivation for combining Stokes with Basin- 2007 with a reasonable expectation of success. Pet. 38–39. Petitioner explains that “[t]o the extent that claim 11 is understood to also claim the basis for selecting a particular average particle size, a [person of ordinary skill] would have had reason to use such a basis for selecting average particle size as taught by Stokes.” Id. at 38 (citing Doolittle Decl. ¶¶ 46–48). Further, “a [person of ordinary skill] would have been motivated to apply this principle to Basin-2007, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 39 (citing Doolittle Decl. ¶ 48). At this stage, Patent Owner does not provide an opposition to Petitioner’s evidence or arguments on the merits. For the reasons given by Petitioner, including those summarized above, we determine that Petitioner” slip op. at 6
- Director reviewOther
“On June 12, 2025, the Acting Director issued a decision denying the request and referring 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 nondiscretionary considerations, as appropriate.” Paper 16, 3. The Acting Director further instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Id.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted supra, the Acting Director of the USPTO has instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Paper 16, 3. Due to the similarity of the parties, counsel, subject matter, and asserted prior art between IPR2024- 01357 and this proceeding, and in view of the Acting Director’s guidance, we exercise our discretion to consolidate this proceeding with IPR2024- 01357. See 37 C.F.R. § 42.122(a).” slip op. at 8
NonePatents in suitUS 8,604,678 - Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · Jun 11, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2024-00856.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. For the reasons given above, we are persuaded that Petitioner has demonstrated that permitting Petitioner to join the ’856 IPR would avoid duplication and promote the efficient resolution of both proceedings and is therefore in the interests of justice.” slip op. at 6
- BurdenInstituted
“III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5
NonePatents in suitUS 8,982,109 - Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · May 28, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2025-00296 with IPR2024-00810.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. DECISION The challenges to the ’110 patent’s claims in this Petition are identical to the challenges in the ’810 IPR’s petition. See, e.g., Pet. 6; ’810 IPR, Paper 1, 8. Additionally, in this proceeding, Patent Owner has not argued that the Petition’s challenges lack sufficient merit to institute trial. See, e.g., Notice 1. For the same reasons we explained in the ’810 Institution Decision, we institute inter partes review of all challenges in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. In this proceeding, we are persuaded that Petitioner has demonstrated that joinder with the ʼ810 IPR would avoid duplication and promote the efficient resolution of both proceedings.” slip op. at 5
NonePatents in suitUS 8,982,110 - PTAB · Oct 23, 2024 · IPR2024-00823 · APJ Carl W Whitehead Jr · IPR · Institution
Instituted IPR on claims 1–8 and 13–22 over Bigbee and Nguyen, finding a reasonable likelihood of obviousness, and granted Valeo’s motion to join IPR2023-01373.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments presented in the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’958 patent is unpatentable as obvious over the combination of Bigbee and Nguyen. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–8 and 13–22) on all grounds set forth in the Petition. Our determinations at this stage of the proceeding are based on the evidentiary record currently before us. This decision to institute trial is not a final decision as to the patentability of any claim for which we have instituted an inter partes review. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a Petitioner’s burden to establish a ‘reasonable likelihood of” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts: A person of ordinary skill in the art of the subject matter of the ’958 patent would have the equivalent of a bachelor’s degree in Computer Science, Computer Engineering (or a related field) and approximately two years of work experience with computer architecture design. Additional education in the field could be substituted for industry experience, and vice versa. See Prelim. Resp. 3. The parties’ positions appear to be more or less the same. Based on the current record, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision, as it is consistent with the level of ordinary skill in the art reflected by the prior art of record. We note that our Decision would be the same under either party’s proposed construction.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). After reviewing the parties’ evidence and contentions, we do not observe a dispute over the meaning of these terms that is necessary to resolve at this stage. Accordingly, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review and consideration of the current record, we determine that Petitioner has sufficiently shown that the combination of Bigbee and Nguyen teaches the recited elements of limitation 19a for purposes of institution and has provided reasons sufficiently supported by factual underpinnings to combine the references with a reasonable expectation of success. Nguyen discloses, “[t]he present invention addresses mechanisms for combining recoverable and non-recoverable error handling mechanisms efficiently in FRC-enabled processors.” Ex. 1006 ¶ 9. Subsequently, Nguyen distinguishes recoverable from non-recoverable errors by treating non-recoverable errors differently from recoverable errors. Nguyen discloses, “If an error reaches error detector 140 from either core 120, recovery module 150 is activated to implement a recovery routine. Recovery can be implemented with relatively low latency by hardware, software, firmware or some combination of these.” Id. ¶ 22, Fig. 1. “However, an FRC error will be triggered if the corrupted data from one execution core and an uncorrupted version of the data from the other execution are allowed to reach FRC checker 130 before recovery module 150 is activated.” Id. Nguyen recognizes, “[s]ince FRC errors are not recoverable, reset module 160 resets the system, if FRC checker 130 signals an FRC error before the underlying parity/ECC error is detected.” Id. Nguyen further recognizes that, “[n]ot all FRC-errors are traceable to underlying parity/ECC or other correctible soft errors. For those that are, it is faster for error detector 140 to address the under lying soft error than for FRC-checker to address the FRC error that results when the corrupted data reaches FRC boundary 104.” Id. ¶ 23 (emphasis added). In this instance instead of the FRC-error being processed by the FRC checker 130 and the Reset module 160, the FRC error is directed to the Error detector 140 and eventually recovery module 150. See id. at Fig. 1. Nguyen also discloses, “the recovery routine triggered by error detector 140 provides greater system availability than the reset routine triggered by FRC checker 130” and “[e]xpanding the FRC boundary thus increases both the amount of logic that is duplicated for execution cores 120 and the flight time, during which detectable errors may be identified.” Id. ¶ 30, Fig 1; see Pet. 37. Nguyen further discloses, “[t]he former increases FRC protection, albeit through a reset mechanism” as shown in Figure 1, elements FRC Checker 130 and Reset Module 160. Ex. 1006 ¶ 30. “The latter increases the likelihood that errors identifiable through parity, ECC [error correction code] or similar core-specific protections are handled through recovery rather than reset” as shown in Figure 1, elements Error Detector, 140 and Recovery Module 150. Id. Additionally, Nguyen’s Figure 7, as discussed above, “is a block” slip op. at 33
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,502,958 - PTAB · Jan 9, 2024 · IPR2023-01128 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR of claims 1, 2, and 5–28 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 97. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, and 5–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 2, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. Subsequently, in September 2023, Petitioner filed an Unopposed Motion to Withdraw the Motion for Joinder, stating that “in view of the Board’s Termination Order in the Amazon IPR, Petitioner should be permitted to withdraw its Joinder Motion.” Paper 9, 2. Based on the foregoing, we grant Petitioner’s Unopposed Motion to Withdraw the Motion for Joinder, as the underlying Motion for Joinder is moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6–7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“that filter,” based on the ’611 patent Specification’s disclosure that β(z) “describes the relationship between O and calibrated O for speech.” Prelim. Resp. 11; Prelim. Sur-Reply 1; Ex. 1001, 5:31–32. We agree with Patent Owner that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Oct 26, 2023 · IPR2023-00883 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on the challenges to claims 1–20 and joined Micron as a petitioner in IPR2022-01427, with its role limited as stated in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. Petitioner argues that, if joinder is granted, it will take an “understudy” role and would only assume a primary role if Samsung ceases participation in the proceeding. Motion 6–9. In the “understudy” role, Petitioner represents, among other things, that it “will not be making any substantive filings,” that it “agrees to be bound by all filings by Samsung . . . except for filings regarding termination and settlement,” and that it “will not cross-examine or defend any witness at deposition.” Motion 7–8. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 1427 IPR.” slip op. at 4
NonePatents in suitUS 9,318,160 - PTAB · Oct 26, 2023 · IPR2023-00882 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on all petition challenges and joined Micron as a petitioner in IPR2022-01428, subject to its stated understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Although Petitioner requests that we “join this IPR with the [1428] IPR” (Motion 2), the joinder statute does not permit this. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020) (“[W]e hold that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings . . . .”). Thus, we treat Petitioner’s Motion for Joinder as a request to be joined as a petitioner to the 1428 IPR, and, for the reasons discussed herein, we grant that request.” slip op. at 2
NonePatents in suitUS 8,787,060 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00862 · APJ Sheila F Mcshane · IPR · Rehearing
On Director remand, the Board instituted inter partes review of claims 1, 2, 6–11, 13, and 15–24 on all petitioned grounds and granted joinder with IPR2021-01493.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Commerce for Intellectual Property and Director of the United States Patent and Trademark Office vacating our previous decision denying institution, remanding for further proceedings, and ordering us to reconsider joinder after reconsidering the decision denying institution. Paper 18 (“Remand Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1493 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1493 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,484,510 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00861 · APJ Sheila F Mcshane · IPR · Rehearing
On remand, the Board instituted review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 on all petitioned grounds and granted joinder with IPR2021-01492.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“General Plastic, and clarified General Plastic by stating that, “[w]here the first-filed petition . . . was discretionarily denied or otherwise was not evaluated on the merits,” a finding favoring discretionary denial under General Plastic’s factors 1–3 is limited to “when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Remand Dec. 5. The Director noted that in this case, the Board had found “no evidence of road-mapping.” Id. at 5 (citing Dec. 13). The Director added that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from later developments.” Id. at 5. The Director agreed with the panel’s finding that General Plastic’s factors 2, 4, and 5 “have limited relevance.” Id. at 6. The Director similarly found factor 7 to “have limited relevance” because the one-year statutory time period may be adjusted for a joined case under 35 U.S.C. § 316(a)(11). Id. (citing Dec. 16). Further, the Director disagreed with the panel’s determination on factor 6 in view of potential inefficiencies, with the Director determining that “the Board’s mission ‘to improve patent quality and restore confidence in the presumption of validity that comes with issued patents’ outweighs the impact on Board resources needed to evaluate the merits of a petition.” Id. In accordance with the evaluation of the factors, the Director found that “the Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Id. The Director remanded the case to the panel for further proceedings, with direction to reconsider the institution decision and joinder. Remand Dec. 7. The Director directed that the panel “consider the Patent Owner’s remaining arguments, including those for discretionary denial under Fintiv and against the merits of the Petitioner’s patentability challenges.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner is correct that its previously-filed 1266 IPR was not considered on the merits, and we note that this previous IPR challenged claims of the ’319 patent based on the same primary prior art—Crowds, Border, and MorphMix—as that asserted in the instant action. See Code200, UAB v. Luminati Networks Ltd., IPR2020-01266, Paper 5, 5–6. We agree with Petitioner that Uniloc is distinguishable from this case here because Uniloc addressed a situation after a denial of an earlier petition on the merits. Reply 2; Uniloc, 6. As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1492 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1492 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 39
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,257,319
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.