- Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentablePTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision
The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48
Patent outcomesUS 6,947,477 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37
Patent outcomesUS 11,010,709 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,010,709 - Fortinet, Inc. v. Croga Innovations Ltd.Institution deniedPTAB · Mar 27, 2025 · IPR2025-00086 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because Delco and Adams did not teach the internal firewall limitations; it also denied Fortinet’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. JOINDER In this proceeding, Petitioner seeks to join IPR2024-01196. However, the Board did not institute an inter partes review in that proceeding, relying on substantially identical reasoning as here. Thus, there is no pending proceeding in the ’1196 IPR to join. As a result, Petitioner’s request to join the ’1196 IPR is denied.” slip op. at 21
- Expert testimonyPetitioner expert discountedOther
“The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 39–42 with EX1003 at ¶¶ 90–96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 4 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,601,780 - PTAB · Mar 14, 2025 · IPR2024-01421 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–16 based on all asserted grounds, finding a reasonable likelihood that the challenged claims are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–16 of the ’601 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA [(Person of Skill in the Art)] in the technical field of the ’601 patent at the relevant time would have had a B.S. degree in Computer Science, Computer Engineering, or an equivalent field, as well as at least 2–3 years of academic or industry experience in the design, analysis, and implementation of operating systems, as well as the design, analysis, and monitoring of computer networks, including issues of network security and network administration, or comparable industry experience. Pet. 11 (citing Ex. 1003 ¶ 30). At least at this stage of this proceeding, Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this institution decision, we adopt the assessment offered by Petitioner.14 It is not disputed by the Patent Owner and is consistent with the ’601 patent and the asserted prior art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“There are no disputes between the parties relating to claim construction. Accordingly, at this stage, no need exists to expressly construe any claim terms to resolve any dispute between the parties.15 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 15 If either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during trial and provide a clear and unambiguous construction with supporting evidence including specifically identifying the challenges, claims, and limitations to which the construction is necessary. (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Asserted Obviousness of Claims 1–4, 7, 9–12, and 15 Based on Walsh,” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,223,601 - Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01342 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds; it found a reasonable likelihood that claim 1 would have been obvious over Whitehead.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner contends that one motivation for combining would have been that Marcus ’904 includes additional disclosure of targeting media programming to specific users, which would lead to better customization of media programming by Cristofalo. Pet. 38 (citing Ex. 1002 ¶ 122). This assertion is vague and unexplained. Petitioner also asserts that Marcus ’904 provides “additional implementation details” on how final media programming is generated and formatted for display. Id. at 38–39 (citing Ex. 1002 ¶ 123). We fail to see, at this stage, how merely disclosing additional details would motivate a skilled artisan to combine references. If we were to agree with a proposed combination merely because one reference includes details another does not, this could “swallow all of patent law.” Cf. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (addressing patent eligibility). Finally, Petitioner contends that combining Marcus ’904’s advertising sources would unlock new revenue sources for Cristofalo. Pet. 39 (citing Ex. 1002 ¶ 124). Patent Owner argues that this rationale appears to be superfluous, since Cristofalo already discloses targeting advertising to users. Prelim. Resp. 26 (“Cristofalo’s receiving system ‘already’ assembles the programming with advertisements.”); see Pet. 38 (referring to Cristofalo’s “targeted advertising”). We tend to agree at this stage. Thus, we question Petitioner’s rationale to combine Cristofalo with Marcus ’904.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[n]o express constructions are required.” Pet. 9. Patent Owner also proposes no express constructions. We agree that no claim terms require construction at this stage.” slip op. at 7
Claim construction§ 103 obviousnesscites AlicePatents in suitUS 8,886,753 - Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01340 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”). We adopt Petitioner’s assessment at this stage. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’704 patent and the asserted prior art. However, our obviousness analysis would have been the same under either party’s assessment. See id. (“My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“On this record, we find Patent Owner’s references to Marcus156’s “exemplary methods” and systems to be non-limiting. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (internal quotation omitted). “Absent disclaimer or lexicography, the plain meaning of the claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). Patent Owner points us to no disclaimer or lexicography in the specification, including in Marcus156.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Patent Owner attacks Petitioner’s “post-hoc rationalization for its proposed modification,” namely “more efficient processing or ‘simplifying processing and communications.’” Prelim. Resp. 26 (citing Pet. 18–19).14 Patent Owner asserts, in part, that Whitehead’s design already permits the “real time or near-real time” assembly of a custom media channel, so “it would be superfluous to include the same information again in the custom channel request.” Id. at 27–28 (citing, e.g., Ex. 1003, 4:40–44, 8:45–51, 11:45–49). At this stage, we tend to agree with Patent Owner. Petitioner acknowledges that “[m]ixing server 130 creates custom media channel 170 in real time or near real-time” yet asserts a POSITA would have modified Whitehead to speed up this process. See Pet. 18. If Whitehead already processes in real time or near real time, it is unclear why a skilled artisan would have sped up that process. Thus, Petitioner’s rationale does appear to be superfluous and hindsight-based at this stage.” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 8,145,704 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Mar 10, 2025 · IPR2024-01343 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Principles of Law Petitioner bears the burden of persuasion to prove unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if present, any objective evidence of obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“dedicated to claim construction, but Patent Owner does address claim construction in its discussion of Petitioner’s challenges. See, e.g., Prelim. Resp. 21–23 (Patent Owner arguing: “Petitioner’s ‘Feed Selection Mapping 2’ should be rejected because it relies on rewriting the claim so that it encompasses a device other than the aggregator providing user information to the publisher. . . . Because Whitehead’s alleged aggregator does not provide profiles to the alleged publisher in a channel request responsive to that request, ‘Feed Selection Mapping 2’ does not even meet the plain reading of the aggregator providing to the publisher ‘the media feed selection’ with ‘user information’ included.” (emphasis added)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Obviousness of Claims 1 and 2 over Whitehead (Ground 1)” slip op. at 9
- BurdenDecided for patent owner
“We find the Petition to be too confusing to follow. It is Petitioner’s burden to articulate a coherent and discernable case that is readily understandable by the Board and that places Patent Owner on notice of the basis of Petitioner’s case so that Patent Owner may have the opportunity to respond. See 37 C.F.R. § 42.104(b) (“[T]he petition must set forth . . . a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art.” (emphasis added)). In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its Whitehead obviousness challenge.” slip op. at 16
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,923,947 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Mar 10, 2025 · IPR2024-01341 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–10 unpatentable under any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’261 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“read limitations out of the claims.” (citation omitted)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 10
- BurdenDecided for patent owner
“Thus, according to Whitehead, the purported client device (media player 115) is a TV or monitor that displays menus, whereas the selection of programming is performed by the remote control 111 in conjunction with the set top box (content processing device 110). Petitioner does not explain adequately how the TV/monitor itself has the capability of selecting a program or, in terms of the claim, how the aggregator (set top box) receives a media feed selection from the TV/monitor. Petitioner’s lengthy string cite, see Pet. 21, is not an adequate substitute for an explanation in the Petition, and we decline to study all the cited portions to try to discern whether Petitioner might have a viable explanation as to how the TV/monitor selects programming.” slip op. at 12
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,215,261 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Feb 25, 2025 · IPR2024-01339 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–20 because the petition did not show a reasonable likelihood of proving the claims obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’597 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’597 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 4–5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 26.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner cites the Alermoth Declaration, paragraphs 198–201, but does not explain the content or pertinence of this testimony. See Pet. 21. We have reviewed this testimony and determine that it is conclusory. This testimony repeats, almost verbatim, the language in the Petition without any further explanation or supporting reasoning or evidence. See Ex. 1002 ¶¶ 198–201. We accord this testimony little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to Petitioner’s contention that “it would have been obvious for a POSITA to modify Ferman’s system to more explicitly select clips for inclusion in the final video programming based on their ability to transition between other events,” we determine that this contention is not adequately supported by articulated reasoning. See Pet. 48. Petitioner asserts that, “[a] POSITA would have been motivated to do so by at least Ferman’s expressed desire to ‘include content suited to [the user’s] particular viewing preferences.’” Id. (citing Ex. 1002 ¶ 89). There is no articulated reasoning (and we can discern none) as to how or why including content suited to a user’s preferences would have motivated a skilled artisan to modify Ferman to select transitional clips. Petitioner also asserts, “doing so would provide more compelling and cohesive video programming.” Id. There is no articulated reasoning or explanation for this assertion and we find this statement to be too general and unsupported. We determine that Petitioner has not established that a skilled artisan would have been motivated to modify Ferman’s system as proposed in the Petition. Patent Owner argues that “Petitioner fails to demonstrate that Ferman discloses ‘identifying . . . a plurality of first[/second] transitional clips.’” Prelim. Resp. 39 (alteration in original). We agree with Patent Owner that the Petition fails to provide adequate support for its assertion that limitations 1[d] and 1[j] are taught or suggested by Ferman.” slip op. at 26
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,317,597 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Feb 25, 2025 · IPR2024-01338 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all grounds because the petition did not show a reasonable likelihood of prevailing on any challenged claim, including deficiencies in the Marcus156- and Ferman-based obviousness showings.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION We have weighed the evidence presented by Petitioner and considered its arguments. We determine that Petitioner fails to establish a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition. For each challenged claim in each asserted ground of unpatentability, Petitioner fails to establish that the asserted art teaches or suggests multiple recited limitations. Accordingly, we determine that trial should not be instituted on claims 1–20 of the ’185 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’185 patent. 3 1 Petitioner identifies TikTok Inc., Bytedance Ltd., Bytedance Pte. Ltd., and TikTok Pte. Ltd. as real parties-in-interest. Pet. 2. 2 Patent Owner identifies itself, NTECH Properties, Inc., as the real party-ininterest. Paper 4 (Patent Owner’s Mandatory Notices), 1. 3 In addition to the Petition and Preliminary Response, Petitioner’s Preliminary Reply (Paper 7) and Patent Owner’s Preliminary Sur-reply (Paper 8) were filed. However, these papers were limited to arguments related to discretionary denial under 35 U.S.C. § 325(d). We do not reach the issue of discretionary denial in light of our decision to deny institution on the merits.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’185 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 23. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner. It is not disputed by the Patent Owner and is consistent with the ’185 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). The “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Neither Petitioner nor Patent Owner requests express claim construction. Pet. 5; Prelim. Resp. 23. And, no need exists to expressly construe any claim terms to resolve this dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,875,185
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.