- Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. 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))).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,924,573 - PTAB · Oct 1, 2024 · IPR2024-00705 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6 under all five grounds, finding a reasonable likelihood of unpatentability based on Zeng-014 and Vinciarelli-218.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the first electronic component’ for the first connection part is a structural feature or relationship.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 52–54). Here, claim 1 requires a structure in which the first connection part comprises a first terminal at one end coupled to a surface of a carrier such as a circuit board, and a second terminal at the other end attached to a surface of the first component, such that the first connection part has mechanical support of the first electronic component. See Ex. 1001, 15:31–37. We are persuaded by Patent Owner’s contention that “this claim language connotes sufficient structural characteristics that preclude a product-by-process.” Prelim. Resp. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resorting to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has repeatedly warned that there has to be evidence of “glue” to make this specific combination, and not just the use of the claim as the roadmap for making the combination of prior art. See, e.g., InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (“Dr. Yanco’s testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”). Here, Petitioner’s alleged motivations to modify the modules Vinciarelli-218 to use the “connection part by curving a piece of metal against an electronic component” of Zeng-014 (Pet. 69) reflect impermissible hindsight bias.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,819,263 - Apple Inc. v. THL Holding Company, LLCRehearing deniedPTAB · Sep 27, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–19 despite the later disclaimer of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“be treated as never having existed, and because claim 1 is the only claim on which Petitioner has shown a reasonable likelihood of prevailing, we should overturn our decision instituting review. As noted above, when rehearing a decision on petition, we review the decision for an abuse of discretion, and an abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” 37 C.F.R. § 42.71(c); PPG Indus. Inc., 840 F.2d at 1567. But Patent Owner has not explained how we erred in any way in reaching our decision instituting review. Instead, Patent Owner’s argument is new and was not presented previously, and Patent Owner bases its rehearing argument on circumstances having changed since we issued our decision. Req. Reh’g 4 (stating statutory disclaimer was “filed following, and in view of, the Board’s guidance in the [decision on institution]”). For this reason, the Rehearing Request does not “identify [any] matters [Patent Owner] believes [we] misapprehended or overlooked,” nor does it “identify . . . the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). For this reason, we deny Patent Owner’s Request for Rehearing. In addition, we note that statutory disclaimers are “considered as part” slip op. at 4
- Adverse judgmentOther
“proposition that “[c]laims disclaimed under § 253(a) are treated as though they never existed.” Prelim. Resp. 3 (citing Vectra Fitness, 162 F.3d at 1383; Guinn, 96 F.3d at 1422). Neither Guinn nor Vectra Fitness involved a situation in which a determination about the patent, once made, was required to be unwound in light of a subsequent statutory disclaimer. Instead, Vectra Fitness related to a question of how to resolve post-disclaimer proceedings, and Guinn dealt with whether to apply a rule treating the disclaimer of all claims involved in an interference proceeding as a request for adverse judgment against the disclaiming party. Vectra Fitness, 162 F.3d at 1381 (disclaimer filed Feb. 16, 1990; reissue application at issue filed May 9, 1991; reissue patent issued Mar. 29, 1994; infringement suit filed Dec. 4, 1996); Guinn, 96 F.3d at 1420–21. In fact, contrary to the result that Patent Owner urges here of reversing our institution of review, Guinn held that it was appropriate to resolve an interference even after all the involved claims had been disclaimed. 96 F.3d at 1422 (“We hold that the Board had the authority and the responsibility pursuant to 35 U.S.C. § 135(a) to resolve the interference and render judgment against Guinn as a result of his disclaimer of claim 9 of the ’812 patent.”).” slip op. at 5
NonePatents in suitUS 11,350,246 - SAP America, Inc. v. Isix IP LLCInstitutedPTAB · Sep 26, 2024 · IPR2024-00615 · APJ Elizabeth J Reagan · IPR · Institution
Instituted IPR of claims 1–5, 7–10, 19, and 23–25 on all asserted grounds; the Board found a reasonable likelihood of success on at least claims 1 and 8 over Brann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “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) (2023). 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 challenged claim. Accordingly, we institute an inter partes review on all of the challenged claims of the ’178 patent based on all of the asserted grounds of unpatentability identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stipulation (Prelim. Sur-Reply 2–3), which we need not address in view of the conditional nature of the stipulation offered by Petitioner. As noted above, in accordance with the Guidance Memo, we will not discretionarily deny if there is an effective Sotera stipulation. However, here, Petitioner’s stipulation states, “if the Board . . . determines that discretionary denial is warranted, then Petitioner stipulates . . . .” Prelim. Reply 7 (emphasis added). Petitioner therefore conditions its stipulation on the Board first determining, based on a consideration of the Fintiv factors, to exercise its discretion to deny institution. Due to the conditional nature of this stipulation, Petitioner is not “stipulat[ing] 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,” as required by the Guidance Memo. As discussed in NXP, the policy of favoring institution when a Sotera stipulation is provided by Petitioner “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the Board.” IPR2021-01556, Paper 13 at 4. Although in NXP, the petitioner offered a stipulation after the decision denying institution issued, it is a distinction without a difference because here the stipulation is only being offered after the Board first reviews the Fintiv factors and determines that it would be appropriate to exercise its discretion to deny the Petitioner. Thus, Petitioner’s conditional stipulation would “[p]ermit[] a petitioner to wait and see if the Board denies institution under Fintiv, and then offer such a stipulation . . . [which] frustrates [the] goals [of a Sotera stipulation] and would open the door to gamesmanship.” Id. at Paper 13 at 4. Accordingly, we do not consider Petitioner’s representation to be an effective stipulation under the Guidance Memo. We therefore must consider the Fintiv factors.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art “in the field of the ’178 patent, as of its earliest possible priority date of October 21, 1999, would have a bachelor’s degree in computer science, computer engineering, or equivalent training, and approximately two years of experience working in the computer science or engineering field, or with integration systems,” but that a “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 13–14 (citing Ex. 1002 ¶¶ 17– 20). At this stage of the proceeding, Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we find that Petitioner’s proposal is consistent with the ’178 patent and the asserted prior art. See Okajima, 261 F.3d at 1355. This proposal is also supported by the Houh Declaration. See Ex. 1002 ¶ 19. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.7” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“For purposes of this Decision, we adopt these constructions applied by Petitioner and Patent Owner. See Ex. 1007. 8 ISIX IP LLC v. International Business Machines Corp., Case No. 6:22-cv- 201-ADA-DTG, “Claim Construction Order,” Doc. 37, filed 01/04/23. 9 Petitioner states that it “accepts Patent Owner’s constructions for purposes of this proceeding only to simplify issues” and that Petitioner “reserves the right to propose alternative constructions in the corresponding District Court case.” Pet. 14, fn. 2.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,308,178 - Visa Inc. v. Cortex MCP, Inc.InstitutedPTAB · Aug 1, 2024 · IPR2024-00490 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–17 on all four asserted obviousness grounds, finding a reasonable likelihood of unpatentability on at least one claim.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the ’973 patent Specification, the language of claim 1, and the testimony of Dr. Shamos, we preliminarily determine, at this stage of the proceeding, that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. For purposes of institution, we need not determine whether the term “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). However, as discussed further in Section II.D.2(d) below, we determine that Petitioner has made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” We emphasize that our construction of “OVER file” is preliminary and based on the present record, and we encourage the parties to further develop the record on claim construction during the trial.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“2. “verified by an issuing agency” Petitioner states that “[c]laims 1, 2, 8, 9, 16, and 17 recite an OVER file comprising ‘a virtual representation of the credential that has been verified by an issuing agency to be an official representation of the credential.’” Pet. 13. Petitioner argues that “[d]uring prosecution of the parent application, Applicant argued that this phrase requires that the issuing agency verify that the virtual representation is an official representation of the credential.” Id. (citing Ex. 1007, 40, 44–45). “Accordingly,” Petitioner contends, “this petition construes this phrase to require that an issuing agency have verified a virtual representation in an OVER file as being an official representation of a credential.” Id. (citing Ex. 1005 ¶¶ 89–92). Patent Owner does not appear to dispute this contention at this stage of the proceeding. See Prelim. Resp. 21–22. For purposes of institution, we will apply Petitioner’s proposed construction of this term.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“those fields.” Id. Patent Owner does not offer a proposed level of ordinary skill at this stage of the proceeding. See generally Prelim. Resp. 21. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’973 patent and the asserted prior art of record.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“of institution that one of ordinary skill would have found it obvious for the issuer of Oborne’s tokens to verify the token. We find logical Petitioner’s contention, supported by Dr. Shamos’s testimony, that one of ordinary skill would have found it obvious for an issuer, after generating the token, to verify that it was an official representation of the credential using the credential information it already has, because such verification would increase confidence that the token legitimately represented the credential. Pet. 22; Ex. 1005 ¶ 212. Dr. Shamos provides further support by testifying that this verification would be a “routine step,” and would mitigate the problems caused by “[t]he existence of unofficial, forged or altered tokens in the marketplace,” which “would create problems for both issuers and users.” Ex. 1005 ¶ 212. We find that these arguments, at this stage of the proceeding, provide sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” for purposes of institution. KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Although Patent Owner criticizes these arguments as “hindsight,” Patent Owner fails to provide any reasoning explaining why one of ordinary skill would not have been motivated to have the issuer verify the token as Petitioner and Dr. Shamos contend. See Prelim. Resp. 28.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,329,973 - Visa Inc. v. Cortex MCP, Inc.InstitutedPTAB · Aug 1, 2024 · IPR2024-00489 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–21 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“[t]he term ‘officially verifiable electronic representation’ is not a term of art” and “was devised purely for use in the Cortex Patents.” Ex. 1005 ¶ 85. Patent Owner does not argue otherwise. Prelim. Resp. 21–22, 33–34. The ’859 patent Specification states that an OVER file “may provide a secure file format and platform for the storage and verification of key user or consumer credentials.” Ex. 1003, 3:62–65. The Specification further explains that the OVER file is “representative of the user’s credentials” and “[t]he OVER file credentials may comprise any officially verifiable electronic credential, such as, for example, a government issued identification, such as a driver’s license, non-driver’s identification card, or professional license,” as well as “privately issued credentials” or “any other credential that may be electronically verified by an issuing agency.” Id. at 4:4–5, 4:10–20. Claim 1 also recites that the OVER file “compris[es] a virtual representation of the credential” of a user. Ex. 1003, 22:3–4. Dr. Shamos states that he “interpret[s] an OVER file as encompassing a file comprising a virtual representation in the form of an image of (or associated with) the credential, but also encompassing a file comprising a virtual representation in the form of a token.” Ex. 1005 ¶ 90. Based on the ’859 patent Specification, the language of claim 1, and the testimony of Dr. Shamos, we preliminarily determine, at this stage of the proceeding, that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. For purposes of institution, we need not determine whether the term “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). However, as discussed further in Section II.D.2(d) below, we determine that Petitioner has made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” We emphasize that our construction of “OVER file” is preliminary and based on the present record, and we encourage the parties to further develop the record on claim construction during the trial. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Other Terms The parties do not propose constructions for any other claim terms, and we determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Shamos, Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. ¶¶ 76–81). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. Patent Owner does not offer a proposed level of ordinary skill at this stage of the proceeding. See generally Prelim. Resp. 21. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’859 patent and the asserted prior art of record.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,749,859 - Visa, Inc. v. Cortex MCP, Inc.InstitutedPTAB · Aug 1, 2024 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–17 and all asserted grounds after finding a reasonable likelihood that claim 1 was unpatentable over Oborne.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Within this two-part framework, the Board considers a number of non-exclusive factors in evaluating whether to exercise its discretion under § 325(d). See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.) (“Becton, Dickinson”); see also Advanced Bionics at 9–11. The factors set forth in Becton, Dickinson are as follows: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023) (“Wolfspeed”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“[t]he term ‘officially verifiable electronic representation’ is not a term of art” and “was devised purely for use in the Cortex patents.” Ex. 1005 ¶ 83. Patent Owner does not argue otherwise. Prelim. Resp. 22–23, 33–34. The ’854 patent Specification states that an OVER file “may provide a secure file format and platform for the storage and verification of key user or consumer credentials.” Ex. 1002, 3:57–60. The Specification further explains that the OVER File is “representative of the user’s credentials” and “[t]he OVER file credentials may comprise any officially verifiable electronic credential, such as, for example, a government issued identification, such as a driver’s license, non-driver’s identification card, or professional license,” as well as “privately issued credentials” or “any other credential that may be electronically verified by an issuing agency.” Id. at 3:66–67, 4:5–14. Claim 1 also recites that the OVER file “compris[es] a first virtual representation of an original credential of a user.” Id. at 21:50–52. Dr. Shamos states that he “interpret[s] an OVER file as encompassing a file comprising a virtual representation in the form of an image of (or associated with) the credential, but also encompassing a file comprising a virtual representation in the form of a token.” Ex. 1005 ¶ 88. Based on the ’854 patent Specification, the language of claim 1, and the testimony of Dr. Shamos, we preliminarily determine, at this stage of the proceeding, that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. For purposes of institution, we need not determine whether an “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). However, as discussed further in Section III.E.2(b) below, we determine that Petitioner has made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” We emphasize that our construction of “OVER file” is preliminary and based on the present record, and we encourage the parties to further develop the record on claim construction during the trial. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“There is a sufficient basis, based on the ’854 patent Specification, to construe “scan” to include an optical scan. See Ex. 1002, 7:64–8:16, 14:19– –29. Further, the ’834 patent Specification states that “the OVER File storage client may generate an information code in the form of a networked or radio transmission, such as, for example, a Near Field Communication (NFC) or Bluetooth” and, in the context of “a user [] present[ing] a stored OVER File credential to a third party for verification,” the Specification appears to at least suggest that NFC interaction involves a scan of the information code. See Ex. 1002, 12:17–50, see also id. at 5:17–35. Accordingly, for purposes of this Decision, we will apply a construction of “scan” that encompasses an optical scan as well as an NFC interaction.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,954,854 - Oxylabs LT Uab v. Bright Data Ltd.InstitutedPTAB · Jun 14, 2024 · IPR2024-00126 · APJ Kristen L Droesch · IPR · Institution
IPR instituted on all challenged claims and grounds because the petition showed a reasonable likelihood of proving at least one challenged claim unpatentable.
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(a). 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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Other 314aDenied
“We decline to exercise discretion to deny institution of inter partes review on the basis of the later-filed reissue application and Patent Owner’s proffered stipulation. At this point in time, the progress and ultimate outcome of the reissue application is mere speculation as the reissue application is in the early stages of examination and will have to proceed through examination in much the same way as a patent application under original examination. See 35 U.S.C. § 251(c); 37 C.F.R. § 1.176(a); MPEP § 1440. Furthermore, the parties may seek to address any concerns they may have regarding efficiency and duplication of efforts by moving to suspend prosecution in the reissue application. See MPEP §§ 1442.01–1442.02.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“3. 35 U.S.C. § 325(d) Same or Substantially the Same Prior Art or Arguments Previously Presented to the Office In evaluating arguments under § 325(d), we use [a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors to consider in evaluating the applicability of § 325(d)) (“Becton, Dickinson”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“For the purpose of institution, we decline to adopt Patent Owner’s construction for “server operating system.” We do not agree with Patent Owner’s arguments that a server operating system is limited to running on server hardware because it is attorney argument and is not supported sufficiently by the evidence of record. See Ex. 1001, 6:33–37; Ex. 2011; Ex. 2012; Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence). At this stage of the proceeding, we agree that a server operating system is role-based. For the purpose of institution, we adopt Petitioner’s construction for “server operating system” as an operating system capable of operating in the role of a server.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,616,826 - PTAB · May 10, 2024 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 7, 9, 32, 38, and 40 on the asserted obviousness ground over Bhattacharya and Yost.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that because judgements have been entered in the district court actions, this suggests finality. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished the Fintiv analysis in AviaGames under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, IPR2022- 00530, Paper 14 at 3 (PTAB Mar. 2, 2023) (Decision on Director Review). Further, the Director determined that “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal duplicate the obviousness issues addressed here. The timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is rendered obvious by Bhattacharya and Yost.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. Pet. 6–7 (citing Ex. 1003 ¶ 8). Petitioner also contends that additional education could compensate for less work experience and vice versa. Id. at 7. For the purposes of the Preliminary Response, Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. Prelim. Resp. 26. For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Prior constructionPrior construction adoptedOther
“patent and district court issued claim constructions for some terms that were disputed. Ex. 1020; Ex. 1025. Petitioner uses the district court’s construction or the agreed-upon construction for the terms “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 7–9 (citing Ex. 1020; Ex. 1025). Petitioner proposes that all terms should be interpreted consistent with the Phillips standard. Id. at 7. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of this Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 26. For the purposes of this Decision, we will use the district court’s claim constructions and those agreed-upon by the parties in the litigations, where the adoption of those constructions have been agreed to by the parties at this juncture in this proceeding. We determine that we need not expressly construe any other claim terms at this juncture. 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))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · May 10, 2024 · IPR2024-00032 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an IDS in the ’494 patent, we agree with Patent Owner that the record shows that Bhattacharya and Spain10 were listed on an IDS during prosecution of the parent ’358 patent, which the ’494 patent Examiner was required to consider. Prelim. Resp. 5 (citing MPEP 609.02). As such, we determine that Bhattacharya and Spain were presented previously to the Office. See Prelim. Resp. 9; Advanced Bionics at 7–8. We also agree with Patent Owner that the addition of Meunier does not substantially impact our § 325(d) analysis because of the Petition’s limited reliance on this reference. For these reasons, we determine that the first prong of Advanced Bionics is met and turn to the second prong.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“would have at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. 1003 ¶ 8; Pet. 6, n.2. According to Petitioner, “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 43. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494
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.