- PTAB · Aug 27, 2025 · IPR2025-00574 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on claim 1 over Choe and Workman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Skill levelOther
“would have had a Bachelor’s in Computer Science with a focus on computer/machine vision, and at least two years of experience with each of: (1) machine learning (including neural network) methods as applied to machine/computer vision and (2) classical machine/computer vision algorithms (e.g., edge detection, line identification, computation of camera parameters from horizon line, etc.)” and that additional education “could serve as a substitute for the experience requirement.” Pet. 7–8 (citing Ex. 1003 ¶ 77). Patent Owner disagrees with Petitioner’s definition and asserts that a POSITA “would have a bachelor’s degree in engineering or computer science with one- or two-years training and/or experience in design of software for camera/sensor systems in the automotive industry.” Prelim. Resp. 12 (citing Ex. 2003 (Declaration of Scott Andrews) ¶ 35). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should the parties continue to disagree regarding the level of ordinary skill in the art during trial, we encourage the parties to explain how an automotive-focused definition, or the lack thereof, would affect any obviousness analysis in our final written decision. B. slip op. at 5
- Expert testimonyOther
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,875,580 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - PTAB · Jun 6, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds and granted LG’s motion to join the Vizio IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Vizio IPR on all challenged claims and all asserted grounds of unpatentability. Vizio IPR, Paper 12; see also Vizio IPR, Paper 1 (the “Vizio Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Vizio IPR. Compare Pet. 1–2, with Vizio Petition, 1–2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Vizio IPR. Mot. 1 (“[Petitioner] . . . relies upon the same expert declaration as relied upon in the Vizio IPR.”); Ex. 1003, 1 (cover page indicating Declaration of Henry Houh in support of the petition submitted in IPR2024-00723), 134 (signature page dated March 21, 2024). Because the grounds of unpatentability in the instant Petition are identical to those in the Vizio IPR, for the same reasons stated in our Decision to Institute in the Vizio IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Vizio IPR, Paper 12, 12–41 (analyzing challenges in the Vizio Petition).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because the “Petition is substantively identical to the petition in the Vizio IPR,” “challenging the same claims of the ’384 Patent on the same grounds while relying on the same prior art, arguments, and evidence,” and relying “upon the same expert declaration as relied upon in the Vizio IPR.” Mot. 1, 4–5. Petitioner represents that joinder will not impact the Vizio IPR schedule. Id. at 5–6. Petitioner also represents that it “explicitly agrees to take an ‘understudy’ role” and “will assume the primary role only if Vizio cease to participate in the Vizio IPR.” Id. at 6– 7.” slip op. at 11
NonePatents in suitUS 9,578,384 - PTAB · Mar 17, 2025 · IPR2024-01310 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–15 and all four asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses 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. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Petitioner argues that “a POSA would have understood a ‘socket’ to be a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Pet. 26 (citing Ex. 1001 ¶ 170). Thus, Petitioner argues, an “event socket” is “a socket where information about one sporting event is provided to a VCD.” Id. At this time, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 26) are not disputed by Patent Owner. Prelim. Resp. 8; see id. at 52–53 (using Petitioner’s proposed construction). At this preliminary stage in the proceeding, we use Petitioner’s proposed construction for “socket” and “event socket.”” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“It does not appear that the ’218 patent defines or describes “online gaming information.” The closest references in the specification are two mentions of “game-related activities” that are said to include “online gaming, board games, chess matches, [and] role-playing games.” Ex. 1009, 4:31–32, 8:16–17. These references do not support Patent Owner’s assertion that “online gaming information” should be construed as requiring a relationship to placing bets. Dr. Rubin does not provide any evidence to support the opinion that online gaming information would be “information relevant to placing bets.” Ex. 2001 ¶ 240. However, even using Patent Owner’s definition of “online gaming information” as requiring such information to be “relevant to placing bets” (Prelim. Resp. 58), Petitioner establishes a reasonable likelihood of prevailing in its unpatentability challenges, as we discuss in greater detail below. For purposes of this Decision, we apply Patent Owner’s construction.6” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Mar 17, 2025 · IPR2024-01311 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 16–30 on all asserted grounds, finding a reasonable likelihood that Genius Sports would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the challenged claims of the ’218 patent have an apparent effective filing date after March 16, 2013, the AIA version of § 103 applies. Ex. 1009, codes (22), (60), (63). Our determinations and findings herein would not change if the pre-AIA provisions applied. (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. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Parallel petitionsInstituted
“The Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, guides that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. Because we agree with Petitioner’s arguments with respect to the claims and the identity of the prior art used, we consider the merits of the instant petition.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’218 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’218 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. 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, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture. Pet. 17–18 (citing Ex. 1001 ¶¶ 72–76). Petitioner additionally asserts that, “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. at 18. Patent Owner asserts: A person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols. Prelim. Resp. 8 (citing Ex. 2001 ¶ 96). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Mar 13, 2025 · IPR2024-01307 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 19–25 and 27–30 on both obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 that follow, we institute an inter partes review as to claims 19–25 and 27–30 of the ’687 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 15 (citing Ex. 1001 ¶¶ 72–76). Patent Owner cites testimony from Dr. Rubin and contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 10 (citing Ex. 2001 ¶ 103). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 105), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’687 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“ordinary meaning. Pet. 6. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first/second event information is provided to VCDs [viewer client devices].” Id. at 39 (citing Ex. 1001 ¶ 352). Thus, Petitioner argues that an “event socket” is “a socket where information about each sporting event is provided to VCDs.” Id. Petitioner additionally proposes constructions for certain means-plus-function limitations in claims 27–30. Pet. 7–9. Regarding the means-plus-function limitations in claims 27–30, Patent Owner argues that only relevant construction pertains to this limitation of claim 27: “means for transmitting the first event information to at least the first viewer client device via a first event information communication channel that is different from the first video communication channel.” Prelim. Resp. 8–10. Patent Owner agrees with Petitioner’s construction of this term but notes certain additional citations that Patent Owner contends supports the construction. Id. at 9–10. Otherwise, Patent Owner states that “the Board need not construe any claim terms aside from the means-plus-function limitations.” Id. at 8. For purposes of this Decision, we apply Petitioner’s constructions of “socket” and “event socket.” Regarding the means-plus-function limitations in claims 27–30, we apply all of Petitioner’s constructions with one exception. Specifically, based on the structure and dependency of claim 30, we determine preliminarily that the preamble of claim 30 is non-limiting and does not require construction as a means-plus-function limitation. We determine that no other aspects of the challenged claims require explicit construction. See, e.g., 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For the reasons given below, we find that Petitioner’s arguments are supported sufficiently by the evidence in the preliminary record before us at this early juncture, and that Patent Owner’s arguments do not undermine Petitioner’s showing. For example, we are persuaded preliminarily that Petitioner’s proposed combination would have improved latency issues in Ellis’s system. See Pet. 19–23; Ex. 1001 ¶¶ 106–115. This is supported by Spivey’s disclosure that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data “to the subscribed connected client devices substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”). We disagree with Patent Owner (Prelim. Resp. 27) that “Petitioner manufactures a data latency problem in Ellis, without any explanation as to why a[n ordinarily skilled artisan] would understand one to exist.” The portion of Spivey cited by Petitioner describes that its techniques reduce latency, thus “providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28; see also id. ¶ 96 (describing improvements of “at least two orders of magnitude” as compared to “conventional time periods of legacy devices”). This teaching shows sufficiently, for purposes of institution, that artisans in the field would have known to consider the problem of latency in delivering live data. Moreover, Patent Owner’s argument that Ellis pertains to “viewing and tuning” and Spivey is not relevant to “how sports viewers commonly watch and interact with displayed sporting events” (Prelim. Resp. 28–29), as well as Dr. Rubin’s related testimony (Ex. 2001 § VI.A.1, ¶¶ 220–223), are based on only a subset of the teachings of both references, rather than the teachings of the references in their entirety. For example, Ellis describes providing real-time data such as sports scores (see, e.g., Ex. 1016 ¶ 41), and Spivey describes that its live data feeds are generated by computing devices associated with a live event (Ex. 1017 ¶ 37). We are mindful that the teachings of the references must be considered as a whole, from the perspective of an ordinarily skilled artisan. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008) (“What a prior art reference discloses or teaches is determined from the perspective of one of ordinary skill in the art.”); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (noting that when evaluating claims for obviousness, “the prior art as a whole must be considered”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,805,687 - PTAB · Mar 13, 2025 · IPR2024-01305 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–9 over all asserted grounds, finding a reasonable likelihood that the challenged claims would be shown obvious.
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). 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 that follow, we institute an inter partes review as to claims 1–9 of the ’687 patent on all grounds of unpatentability presented.” slip op. at 2
- Parallel petitionsOther
“1 Of note, Petitioner concurrently filed another petition challenging claims 19–25 and 27–30 of the ’687 patent in IPR2024-01307. Pet. 3–4; Paper 3, 3. Petitioner also filed a ranking of the two petitions in which it ranked the petition in IPR2024-01307 first and the instant Petition second. Paper 3, 3. Notwithstanding, Patent Owner does not put forth any arguments seeking discretionary denial under 35 U.S.C. § 314(a) related to Petitioner’s use of more than one petition against the ’687 patent. Moreover, we are satisfied by Petitioner’s stated reasons for filing two petitions. See Paper 3, 2–3.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 13 (citing Ex. 1001 ¶¶ 72–76). Patent Owner cites testimony from Dr. Rubin and contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 8 (citing Ex. 2001 ¶ 99). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 101), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’687 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“ordinary meaning. Pet. 6. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 37 (citing Ex. 1001 ¶ 352). Thus, Petitioner argues that an “event socket” is “a socket where information about one sporting event is provided to a VCD.” Id. Patent Owner states that “[e]xcept for the ‘event socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.” We determine that no other aspects of the challenged claims require explicit construction. See, e.g., 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 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,805,687 - PTAB · Mar 12, 2025 · IPR2024-01256 · APJ Lisa A Murray · IPR · Institution
The Board instituted review of claims 1–6, 10–14, 16, and 17 because Petitioner showed a reasonable likelihood that Ahn and Chaudhri render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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 that follow, we institute an inter partes review as to claims 1–6, 10–14, 16, and 17 of the ’727 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“have “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 5 (citing Ex. 1003 ¶ 28). In addition, Petitioner states that additional years of experience could substitute for an “advanced-level degree” (and vice versa). Id. Patent Owner notes that it does not agree with all aspects of Petitioner’s proposed level of ordinary” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construed in order to resolve the controversy currently before us. Pet. 5; Prelim. Resp. 5. Petitioner, however, asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct.” Pet. 11 (quoting Ex. 1009, 3); Ex. 1003 ¶ 36. Petitioner further asserts that one of ordinary skill would have understood that translucency, i.e., “not transmitting detail[,]” is a type of blurring. Pet. 11 (citing Ex. 1009, 6 (defining “translucent” as “allowing light, but not detailed images, to pass through; semitransparent”)); Ex. 1003 ¶ 36. Patent Owner states that it does not agree with Petitioner’s proposed interpretation of blurring, but does not propose any alternative construction and presents argument challenging the grounds based on Petitioner’s proffered interpretation. Prelim. Resp. 21 n.5. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. We further note that for the term “distance magnitude [of the gesture],” Patent Owner represents that Petitioner has argued in related district court proceedings that this term means “length [of the gesture].” Prelim. Resp. 5. Patent Owner contends that “the plain and ordinary meaning of this term is readily understandable and Patent Owner does not believe formal construction to be necessary to deny institution[.]” Id. On the present record, Petitioner’s proposed construction appears correct, and for purposes of institution, we construe “distance magnitude” as “length” in our analysis of limitations [1.d.i] and [1.d.ii] below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“c) Analysis For purposes of this Decision, we find that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill in the art would have had a reason to combine the teachings of Ahn and Chaudhri. We do not find Patent Owner’s arguments to the contrary persuasive. In particular, we find unpersuasive the argument that the proposed modification “does not flow” from the cited prior art because it purportedly combines elements of different embodiments of Ahn and relies on Chaudhri’s blurred foreground to teach blurring the background on a display. See Prelim. Resp. 38. At the heart of Patent Owner’s arguments is the characterization of Petitioner’s obviousness theory as that of a significant modification of Ahn to incorporate specific interface adjustment elements from Chaudhri. Prelim. Resp. 48−58. This is not what the Petition states. The Petition reads: “the Ahn-Chaudhri combination represents the predictable and expected result of applying, in the context of Ahn’s touch screen mobile device, the user interface state transition techniques described by Chaudhri ’842.” Pet. 18 (emphasis added). Petitioner explains that “[t]he fundamental aspects of Ahn’s disclosure would remain intact[.]” Id. Therefore, Patent Owner’s arguments alleging modifications of Ahn’s operation are unpersuasive at this juncture. And, to the extent Patent Owner alleges that there may be drawbacks to the techniques in Chaudhri, we disagree because tradeoffs do not necessarily undermine Petitioner’s proffered combination of teachings, given the articulated benefits on the present record, such as to indicate user and the background. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). As to whether the indication of user progress would be imperfect or not as helpful in differentiating between objects as Patent Owner argues, we note that Chaudhri’s technique need not be the most optimal technique for accomplishing visual differentiation, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,740,727
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.