- PTAB · Mar 28, 2025 · IPR2024-01505 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–8, 15, 17, and 19–25 because Petitioner showed a reasonable likelihood of proving obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 19 (citing Ex. 1003 ¶¶ 37–39). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 33. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [1a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [1a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - PTAB · Mar 28, 2025 · IPR2024-01503 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 9–14, 16, 18, and 26–30 based on a reasonable likelihood of obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [9a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [9a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“particular teachings sought to be combined. Rather, it appears, according to Petitioner, anything in Nakamura properly can be combined with anything in WD4 simply because Nakamura is a proposal for the next draft version of new standard H.265, i.e., version 4, and WD4 is the resulting draft version 4 of H.265 after all the proposals had been considered. Pet. 65–66. Petitioner’s reasoning is flawed and based on mere speculation. Nakamura is not a proposal to revise or modify WD4. WD4 did not yet exist at the time the Nakamura proposal was made. Even if some suggestions of Nakamura made it into WD4, as Petitioner asserts (Pet. 65), i.e., spatial merge candidate positions unification, that does not mean one of ordinary skill in the art would have had reason to combine other teachings of Nakamura with particular disclosures of WD4. Even assuming Nakamura and WD4 have striking similarities in some way and also a common purpose to some general extent, that still does not mean everything in one is combinable with everything in the other, without specific consideration and discussion of what are proposed to be combined and in what manner. g. Preliminary Conclusion for Claim 9 For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 9 over Nakamura and WD4.” slip op. at 63
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We must grant or deny institution on both of Petitioner’s grounds. See 37 C.F.R. § 42.108(a). Petitioner has made a sufficient showing based on Rusert and Zheng for the Board to institute review, but not Nakamura and WD4. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. Rather, the benefits of holding a trial to resolve the Rusert-Zheng ground for which Petitioner has shown a likelihood of prevailing outweigh any theoretical burden of addressing the weaker Nakamura-WD4 ground, to the extent that the Examiner considered Nakamura and WD4. See Dril-Quip, Inc., v. FMC Tech., Inc., PGR2021- 00049, Paper 10 at 13–14 (PTAB Aug. 4, 2021) (declining to exercise discretion to deny institution under § 325(d) even though one asserted ground was “weak” on the merits). Thus, we do not exercise our discretion to deny institution based on § 325(d). 3. Conclusion We find that the same or substantially the same prior art or arguments, i.e., Rusert (Ex. 1004) and Zheng (Ex. 1005), previously were not presented to the Office. We need not proceed past the first stage of the Advanced Bionics framework. We decline to exercise discretion under § 325(d) to deny the Petition.” slip op. at 68
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - PTAB · Nov 7, 2024 · IPR2024-00605 · APJ Jameson Lee · IPR · Institution
Instituted review of claims 9–14, 23–28, and 30 on all petition grounds; Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings 13 Han, Woo-Jin, et al., Improved Video Compression Efficiency Through Flexible Unit Representation and Corresponding Extension of Coding Tools, 20 IEEE Transactions on Circuits and Systems for Video Technology 1709 (2010). 14 Tai, Shen-Chuan, et al., A Multi-Pass True Motion Estimation Scheme with Motion Vector Propagation for Frame Rate Up-Conversion Applications, 4 Journal of Display Technology 188 (2008). 15 Huang, Ai-Mei, et al., A Multistage Motion Vector Processing Method for Motion-Compensated Frame Interpolation, 17 IEEE Transactions on Image Processing 694 (2008). relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses. Patent Owner also does not explain how it combines Han, Tai, and Huang to provide the same teachings relied on from Rusert by Petitioner.16” slip op. at 65
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5 which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 69
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Creusere, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 21 (citing Ex. 1003 ¶¶ 57–59). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 31. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714 - PTAB · Jul 13, 2022 · IPR2022-00165 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on every asserted ground after finding a reasonable likelihood of success for at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). The Guidance Memo states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo at 3. Petitioner states: “Petitioner already stipulated that if IPR is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR. This favors institution. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential).” Prelim. Reply 5 (emphasis added). With regard to this representation by Petitioner, Patent Owner asserts: “There is no such stipulation of record in this matter or in the District Court, [See EX2018], nor has Petitioner ever provided any such stipulation by any other means.” Prelim. Sur-reply 4. Petitioner’s averment itself constitutes written representation to the Board that if inter partes review is instituted in this proceeding it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in this proceeding. Because Petitioner has represented to the Board that if inter partes review is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR, we decline to deny the Petition discretionarily. Guidance Memo at 3.” slip op. at 10
- 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(a) (2018); see also 37 C.F.R § 42.4(a) (2021) (“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 challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on each ground set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2009 ¶ 23.6 Based on the language “[i]f the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” we read the above-quoted testimony of Dr. Surati as indicating that in rendering his opinions, he has assumed the level of ordinary skill as stated by Mr. Willis, and that he has restated that level of ordinary skill more simply as: “a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Petitioner’s assertion is supported by the testimony of Mr. Willis. Ex. 1004 ¶¶ 32–35. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Given that Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art, we adopt Petitioner’s primary statement of the level of ordinary skill in the art, but exclude Petitioner’s “alternative” statement for reasons discussed above. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is necessary. Pet. 5. Further, Petitioner states that it interprets claims according to the standard set forth in Phillips. Id. Patent Owner has proposed an express construction for the term “event.” Also, the parties’ arguments reveal conflicting understanding and interpretation of the term “alternative title.” Patent Owner argues that in the context of the ’179 patent, an event is a “detectable condition of a system that can trigger a notification.” Prelim. Resp. 16. On the current record, however, we are uncertain that Patent Owner’s construction is the correct construction. For example, the ’179 patent explains that the method possesses “an event, such as by way of example but not limitation, a new mail event, a new instant message event, a reminder event, a calendar event, or some other event, and generating a string of characters that includes information associated with the event.” Ex. 1001, 2:3–7 (emphasis added). The quoted text appears broad. The ’179 patent states that the events used in the embodiments are merely examples. Id.; see also id. at 12:30–32 (“As used herein, the term ‘embodiment’ means an embodiment that serves to illustrate by way of example but not limitation.”). We have no need, however, to provide an express construction for “event,” because even under Patent Owner’s proposed construction for event, as explained in the discussions of the alleged grounds of unpatentability below, Petitioner has made a sufficient showing for institution purposes.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,402,179 - PTAB · Jul 13, 2022 · IPR2022-00164 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on all grounds, finding a reasonable likelihood of success on obviousness over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to our precedent, one way to mitigate those concerns is for a petitioner to present a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential); accord Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).3 Such a “stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, Paper 12 at 19 (citing Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 12 n.5 (PTAB June 16, 2020) (informative, designated July 13, 2020)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. And we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. “would be someone with a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Prelim. Resp. 15 (citing Ex. 2009 ¶ 23). Patent Owner’s declarant, Dr. Surati, testifies: It is my belief that a POSITA [person with ordinary skill in the art] of the ‘135 patent would have possessed: a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems. If the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis. As noted above and on my CV [Ex. 2017], my qualifications exceed this description. Ex. 2009 ¶ 23 (emphasis added). The italicized sentence in the paragraph above is ungrammatical and unclear. It could be interpreted in multiple contradictory ways: The sentence could mean that, in rendering his opinions, Dr. Surati has assumed the level of ordinary skill as stated by Dean Willis. Or it could mean that, “if the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” Dr. Surati’s qualifications exceed those qualifications. Nevertheless, we see no meaningful difference between Petitioner’s definition and Patent Owner’s. Rather, Patent Owner’s definition appears to be a simplified version of Petitioner’s. To the extent that Patent Owner disagrees, Patent Owner is encouraged to explain how the differences affect the obviousness analysis. Also, we preliminarily determine that Petitioner’s definition is supported by the testimony of Dean Willis (Ex. 1004 ¶¶ 32–35) and is consistent with the level of skill reflected in the asserted references (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We need only construe terms that are in controversy and to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner argues that “[i]t is not necessary for the Board to resolve this claim construction dispute for purposes of this Preliminary Response because both Prelim. Resp. 59 n.5. We agree with Patent Owner on this point. See id. That is, we construe the term “title array” to require a data structure, which is not disputed. But other than that, we need not further construe the term at this stage.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,230,135 - PTAB · Feb 18, 2022 · IPR2021-01325 · APJ Jameson Lee · IPR · Institution
Instituted IPR on all grounds for claims 70–80, 84, 89–97, 99, 103, and 107; petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record at this juncture, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability at least one challenged claim of the ’457 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’457 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“exercise discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review in view of parallel district court proceeding. Prelim. Resp. 37–44 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Petitioner asserts, in its Preliminary Reply, however, that the circumstances have changed with respect to parallel litigation in district court, because as of January 10, 2022, “Patent Owner is no longer asserting the ’457 Patent.” Prelim. Reply 1. Patent Owner, in its Preliminary Sur-Reply, confirms that “the ’457 patent is no longer asserted in the co-pending litigation.” Prelim. Sur-Reply 1. Because the ’457 patent is no longer being asserted in parallel district court litigation initially noted by the parties in the Petition and in the Preliminary Response, discretionary denial as originally requested by Patent Owner in its Preliminary Response is moot and need not be reached. Patent Owner asserts that under Fintiv Factor 6, “the Board should deny institution of trial because the merits of this Petition are particularly weak.” Prelim. Sur-Reply 1. The assertion is misplaced where, as here, there is no longer any parallel litigation involving the ’457 patent. The Fintiv factors are not at issue in this circumstance.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s use of the qualifier “at least” renders Petitioner’s articulation vague and potentially overlapping with the level of skill of an expert. On this record, we adopt Petitioner’s articulation of the level of ordinary skill, but delete the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert. What remains appears consistent with what is reflected by the content of the applied prior art 2001) (the applied prior art may reflect an appropriate level of skill). In summary, one with ordinary skill in the art at the pertinent time period would have had a Bachelor’s degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in the field working with, teaching, or researching stereoscopic and/or virtual/augmented reality (VR/AR) display technologies. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In related litigation proceedings, Petitioner and Patent Owner agreed to construe “cursor” as “an indicator movable within a three-dimensional image, image space, and volume.” MS-1025. For the purposes of this petition, Petitioner will use this construction. It follows then that a “3D cursor” is a “3D indicator movable within a three-dimensional image, image space, and volume.” MS-1003, ¶[49]. Pet. 8 (footnote omitted). Patent Owner has not proposed a construction for either “cursor,” “3D cursor,” or “three-dimensional cursor.” Nor has Patent Owner expressed disagreement in this proceeding with Petitioner’s proposed construction for “three-dimensional cursor.” On this record, we see no error with Petitioner’s proposed construction for “three-dimensional cursor” and will, for purposes of institution, adopted it as the construction for “three-dimensional cursor.” indicator movable within a three-dimensional image, image space, and volume.”9” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,795,457
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.