- PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5 and 8–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Koskinen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “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). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 7 (citing Ex. 1003 ¶¶ 19–21). Petitioner further argues that “[a]dditional education” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms.6 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Additionally, a person having ordinary skill in the art would have known and been familiar with information elements (IEs) that specified an RLC reordering timer value based on (1) general knowledge that IEs carried information in RRC messages and (2) that 3GPP TSs describe an IE carrying recording timer duration information for the RLC layer. See Ex. 1003 ¶ 151; Ex. 1014, 219–20. Accordingly, it would have been obvious to a person having ordinary skill in the art “that the PDCP timer information, which used similar variables as its RLC counterpart (Koskinen, ¶¶37-38), would also be carried in a PDCP configuration IE.” Ex. 1003 ¶ 151.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,863,573 - Tessell, Inc. v. Nutanix, Inc.InstitutedPTAB · Jun 2, 2025 · IPR2025-00298 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–36 under both § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in computer science, computer engineering, or a related field, with two years of academic and/or industry experience with database technologies.” Pet. 13 (citing Ex. 1003 ¶¶ 57–70). Patent Owner has not proposed a level of ordinary skill in the art and does not dispute Petitioner’s stated level of ordinary skill in the art. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bhattacharjee 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). B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). 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))). Petitioner has not proposed an express construction for any claim term. Neither has Patent Owner. For purposes of this Decision, we need not expressly construe any claim term. C.” slip op. at 9
- BurdenInstitutedInstituted
“Because the inputs are used by the processor to create the database, the inputs must be received by the processor prior to creation of the database. Creation of a database is a way of provisioning a database, as explained in the specification of the ‘818 patent. Ex. 1001, 3:41–43 (“Database provisioning services involve creating and/or associating databases with the database system for management and use.”). The SLA then protects the database “after” it is provisioned (per limitation [1D]) and a snapshot may be captured “after” the database is provisioned (per limitation [1E]). For the foregoing reasons, Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 would have been obvious over Sivasubramanian and Zha. 4. Dependent Claims 2–7, 22, 23, 28–30 Claims 2–7, 22, 23, and 28–30 each depend, directly or indirectly, from claim 1. Ex. 1001, 40:31–57, 42:17–22, 42:35–53. Patent Owner does not present arguments for these claims separate from those it submits for claim 1, which we have rejected above in the context of claim 1. We have reviewed Petitioner’s submissions and determine that Petitioner has shown a reasonable likelihood that it would prevail in showing obviousness of claims 2–7, 22, 23, and 28–30 over Sivasubramanian and Zha.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“With respect to limitation [1E], Petitioner asserts that it would have been obvious for one of ordinary skill in the art to incorporate into Sivasubramanian Zha’s feature of user input of the frequency for retrieving snapshots and user input of the “times during the day” for retrieving snapshots. Pet. 52–54. Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1E]. With respect to limitation [1F], Petitioner notes that Sivasubramanian already discloses a user interface to receive the first, second, and third inputs, and asserts that if there are fourth and fifth inputs based on an analysis of limitation [1D], then one of ordinary skill would have used the same interface to receive the fourth and fifth inputs. Pet. 54–55. Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1F]. With respect to limitation [1H], Petitioner asserts that a person of ordinary skill in the art (POSA) “would have understood that the purpose of accepting these inputs [first through fifth] is to use them to ‘create’ a database based on these inputs and based on the amount of storage determined from the user input.” Pet. 57 (emphasis omitted). Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1H], provided that limitation [1D] regarding fourth and fifth inputs is met.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,860,818 - PTAB · Nov 7, 2024 · IPR2024-00604 · APJ Jameson Lee · IPR · Institution
The Board instituted review of claims 1–8, 15–22, and 29 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim based on the Rusert grounds.
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 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.” slip op. at 63
- 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 67
- Skill levelSkill level petitioner adoptedOther
“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 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00330 · APJ Arthur M Peslak · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Analysis The Director of the USPTO has proscribed an interim procedure for discretionary denials in AIA post-grant proceedings with parallel district court litigation. See Ex. 1025, Memorandum to Members of the PTAB from Director Vidal, dated June 21, 2022 (“Memorandum”). In the Memorandum, the Director states that “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between district court and the PTAB.” Id. at 7. Further, when such a stipulation is provided, “the grounds the PTAB resolves will differ from those present in the parallel district court litigation” and “the PTAB will not discretionarily deny institution of an IPR.” Id. In this case, Petitioner provides a stipulation that falls within the contours of the Memorandum. Ex. 1048, 1. Petitioner’s stipulation meets the requirements of a stipulation pursuant to Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), and, therefore, the Director’s Memorandum governs our determination here. For the foregoing reasons, in accordance with the Director’s Memorandum, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a) due to the parallel district court litigation.” slip op. at 9
- 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, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply 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 ’656 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’656 patent on all grounds stated in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential), the Board accorded “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning. In Xerox, the Board held that the critical inquiry is whether a declaration is conclusory and unsupported and whether it discloses underlying facts or data on which the opinion is based. Xerox, Paper 9 at 15 (quoting 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”)); see also RightQuestion, LLC, Paper 17 at 23 (“Petitioner’s declarant makes these same statements verbatim, without more, and with no additional citations to evidence.”). Patent Owner ignores Dr. Jones’s testimony summarizing the relevant disclosures from Stone, Hoyos, and Varghese on which he relies to form his opinions. Ex. 1003 ¶¶ 37–46. Patent Owner also ignores Dr. Jones’s testimony of the specific basis for his opinion that a person of ordinary skill in the art would have been motivated to combine Stone, Hoyos, and Varghese with a reasonable expectation of success. Ex. 1003 ¶¶ 54–68. This testimony contains specific detailed citations to the references in support of Dr. Jones’s opinions. We, thus, find that Dr. Jones’s testimony in support of the Petition, taken as a whole, is supported sufficiently with evidence and technical reasoning at this stage of the proceeding. Consequently, we do not give his testimony little to no weight because portions of it are repeated in the Petition. ii.” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Although Stone does not explicitly mention the word “fraud,” it discloses that user device 408 may include user identifiers 418 that “may include attributes related to the user such as . . . a user name, password, photograph image, biometric id.” Ex. 1008 ¶ 45. Dr. Jones testifies that “Stone’s biometric information/‘biometric id’ is typically received and stored on user device 404 during an enrollment/registration process” and “is used for subsequent comparison with the later captured data to provide an authentication decision for a transaction request.” Ex. 1003 ¶ 92 (citing Ex. 1014 ¶ 9; Ex. 1021, Abst.; Ex. 1023, 8:3–9:39). Patent Owner’s attorney argument that Stone does not mention fraud or biometric authentication ignores the cited disclosure in Stone and Dr. Jones’s testimony which is sufficiently supported by the references he cites. Further, Patent Owner’s argument that Stone does not discuss techniques for preventing fraud is undercut by its acknowledgement that Stone discloses “authentication of the user[] by the payment server where the user’s account information is stored.” Prelim. Resp. 44 (citing Ex. 1008 ¶ 46). Patent Owner’s argument that Hoyos is not concerned with improving an electronic display or a user’s experience (Prelim. Resp. 36) is unavailing because it fails to address Petitioner’s proposed combination. Petitioner does not rely on Hoyos to improve an electronic display or the user experience but proposes modifying Stone by “implement[ing] Hoyos’ spoofing resistant biometric authentication for fraud detection” with the resulting benefit of “improved deterrent against attempted fraudulent transactions and decreased rejection of valid customers.” Pet. 16 (citing Ex. 1003 ¶ 62). With respect to adding Varghese to the combination of Stone and Hoyos, Patent Owner’s argument is that Petitioner “fails to explain why a [person of ordinary skill in the art] would have combined location authentication mentioned in Varghese with Hoyos’s biometric authentication techniques.” Prelim. Resp. 37. Patent Owner, however, does not address Petitioner’s assertions that a person of ordinary skill in the art would have implemented Varghese’s multifactor real-time authentication including location authentication “for improved security” and the other alleged benefits for doing so stated in the Petition. Pet. 22.” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,713,656 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00331 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–12, 14–18, and 20–23 based on a reasonable likelihood of success on at least one claim, applying all challenges in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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). 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).” slip op. at 2
- Other 314aOther
“V. CONCLUSION Based on the arguments and evidence presented by the parties, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 95
- Obviousness (§103) › Analogous artAnalogous artInstituted
“4. WHETHER PETITIONER ESTABLISHES A REASONABLE LIKELIHOOD THAT STONE IS ANALOGOUS ART” slip op. at 38
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,526,886 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Jul 16, 2024 · IPR2024-00334 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR of claims 1–3, 5, 7, 8, 10–15, 17, 19, and 22–25 on all petitioned grounds, finding a reasonable likelihood of success on the asserted obviousness challenges.
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) (2023). 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). Upon consideration of the contentions and the evidence before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’138 patent on all grounds set forth in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner’s contentions are misplaced. It is an oversimplification to say that if the expert testimony is the same as statements in the Petition, then the testimony should be accorded no weight. The issue is not whether the two are the same or nearly identical. Rather, the issue is whether the testimony refers to supporting evidence or contains technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). This is consistent with 37 C.F.R. § 42.65(a), which states: “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We do not accord expert testimony little or no weight simply because it is verbatim to what Petitioner states in the Petition. Patent Owner has not even attempted to show that Dr. McDaniel’s testimony is without citation to underlying evidence and lacks technical reasoning. Further, Dr. McDaniel’s testimony regarding motivation to combine the teachings of Kesanupalli and Brown includes numerous other paragraphs, e.g., paragraphs 75–79, and Dr. McDaniel also has testified to the technical content of Kesanupalli, e.g., paragraphs 65–70. All of that testimony should be read together in determining whether Dr. McDaniel’s testimony regarding combining the teachings of Kesanupalli and Brown is wholly conclusory, i.e., without any evidentiary support or technical reasoning. Patent Owner has not shown that it is. Thus, Patent Owner’s argument that Dr. McDaniel’s testimony should be accorded no weight as to the reasonable expectation of success analysis lacks merit. We decline to accord Dr. McDaniel’s testimony no weight. E.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 18–21). At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which would make the stated scope without an upper bound and thus potentially cover the level of skill of an expert. It is supported by the testimony of Dr. McDaniel (Ex. 1003 ¶¶ 18–21) and not disputed by Patent Owner (Prelim. Resp. 10–11). 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 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Each independent claim recites generally “a processor;” and the ’138 patent states “[a]s used herein, the term ‘processor’ refers to one or more devices, circuits, and/or processing cores configured to process data, such as computer program instructions.” APPL-1001, 2:21–23. POSITA would understand that the plain and ordinary meaning of the term “processor” may include “one or more devices, circuits, and/or processing cores,” which includes a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor. APPL-1003, ¶56. Pet. 7. Patent Owner has not proposed a construction for “processor” and states that “it does not address these positions [of Petitioner]” because its Response “does not depend on these definitions.” Prelim. Resp. 11. Based on the description in the specification of the ’138 patent, as cited by Petitioner, we determine, preliminarily, that a “processor,” in the context of the ’138 patent, may include a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,514,138 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 22, 2024 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–13 and 16 on all petitioned grounds after finding a reasonable likelihood that claim 1 is obvious over Fells.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (vacating a Board decision denying institution where the examiner considered references but never provided any discussion, analysis, or other findings, and the petition provided a sufficient argument on the merits, which the examiner misapprehended or overlooked). Here, in evaluating Becton, Dickinson factor (c), we determine that the Examiner’s reasoning with respect to Fells and Cook is not well developed and neither reference was the basis for a rejection. We also determine, for reasons we discuss more fully below, that InductEV has shown that the Examiner materially erred by overlooking at least the teachings of Fell as applied to claim 1 (Becton, Dickinson factor (e)), and that the Petition presents additional evidence and facts, including testimony by Dr. Allen, that warrant reconsideration of Fells (Becton, Dickinson factor (f)). See infra Section IV.C. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms. Pet. 6 (citing Ex. 1003 ¶¶ 62–63); Prelim. Resp. 5–6. We agree that, for this decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,027,184 - PTAB · May 10, 2024 · IPR2024-00306 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Microsoft would show at least one claim obvious over Ahya and McKillop.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Board’s projected statutory deadline for a final written decision. Here, no trial date has been set in the related district court proceeding.1 Pet. 2–3; Prelim. Resp. 13. However, “when considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.” Ex. 2002, 3 (Vidal Memo). The most recent statistics show a median time-to-trial for completed civil trials in the Eastern District of North Carolina of 31.2 months. See Reply 1; Ex. 1082, 21 (U.S. district courts judicial caseload profile). Thus, a projected trial date for the related district court proceeding, which was filed on September 1, 2023, would be in mid-April of 2026. See Pet. xii (providing filing date for district court litigation). This would be about ten months after the projected statutory deadline for a final written decision in this proceeding. Accordingly, this factor weighs heavily against discretionary denial.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner and Patent Owner. We are persuaded that Petitioner demonstrates, for purposes of this institution decision, that it is reasonably likely that it will be able to show that the combination of Ahya and McKillop, as viewed by a person of ordinary skill in the art at the time of the invention, teaches each element of claim 1. We also find, at this stage of the proceeding, that Petitioner has sufficiently articulated some reasoning as to why a person of ordinary skill in the art at the time of the invention would have been motivated to combine Ahya and McKillop. Accordingly, we conclude that based on the current record, Petitioner’s contentions, detailed above and supported by the Rysavy Declaration, are sufficient to show a reasonable likelihood of success for Petitioner’s challenge to claim 1. Petitioner’s analysis of the remaining challenged independent claim, claim 23, refers back to its analysis of claim 1 and cites evidence demonstrating that the combination of Ahya and McKillop teaches a WTRU that performs each of the recited steps of claim 1. Pet. 47. Accordingly, at this stage of the proceeding, Petitioner has demonstrated a reasonable likelihood of showing that claim 23 is also unpatentable over Ahya and McKillop. f. Conclusions Regarding Obviousness of the Challenged Dependent Claims We have reviewed Petitioner’s contentions regarding the unpatentability of dependent claims 3–10, 12, 14–15, 21, 25–32, 34, 36–37, 43, 46–47, and 49–50. Pet. 36–47. Patent Owner does not challenge these contentions at this stage in the proceeding. See Prelim. Resp. 7–57. We are persuaded, based on the evidence and argument presented, that Petitioner has demonstrated a reasonable likelihood of showing that claims 3–10, 12, 14–15, 21, 25–32, 34, 36–37, 43, 46–47, and 49–50 are unpatentable over the combination of Ahya and McKillop.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“InterDigital states that for the purposes of its Preliminary Response, it does not challenge Petitioner’s definition of a person of ordinary skill in the art, but “reserves the right to argue for a different definition should the Board institute trial in this proceeding.” Prelim. Resp. 7. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, which we view as consistent with the ’054 patent and the asserted prior art, and we apply that definition in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Microsoft represents that it applies the plain and ordinary meaning of all claim terms and that no terms in the challenged claims require a means- plus-function analysis. Pet. 14. For the purposes of its Preliminary Response, InterDigital adopts Microsoft’s position that no constructions are required. Prelim. Resp. 7. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., 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.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054 - PTAB · May 10, 2024 · IPR2024-00305 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that Microsoft would show at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find this factor weighs heavily against exercising discretion to deny institution for the reasons stated by Petitioner. Fintiv seeks “[t]o minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate a trial is likely to occur months after a Final Written Decision in this proceeding, any potential conflict between Board and district court decisions is de minimus.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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). Under this standard, a claim is construed “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. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Reasons to combine Ahya and McKillop Petitioner contends a person skilled in the art would have combined the teachings of Ahya and McKillop because both references disclose “Bluetooth and Wi-Fi enabled wireless devices that include touchscreens for receiving user inputs and Bluetooth discovery for detecting other nearby devices” and because “McKillop provides express motivation for switching from Bluetooth to Wi-Fi to transfer files: speed and range.” Pet. 19–20. Patent Owner does not contest Petitioner’s reasoning to combine the teachings of these references. See Prelim. Resp. 7–57. We have reviewed Petitioner’s contentions, and find Petitioner articulates sufficient reasoning with rational underpinning to combine the teachings of Ahya and McKillop in the manner claimed.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,737,933
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.