• Light & Wonder, Inc. v. Evolution Malta LimitedInstituted
  PTAB · Dec 16, 2025 · IPR2025-01073 · APJ Robert L Kinder · IPR · Institution

  The Board instituted IPR of claims 1–5, 7–12, 14–18, and 20 on all petitioned grounds, finding a reasonable likelihood that Kido anticipates at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1005, 5:13–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’024 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 33–35. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Pet. 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129. Patent Owner next contends that Kido does not disclose a first payout that is “for the spin of the roulette wheel.” Prelim. Resp. 29. Patent Owner’s argument is premised on the cumulative nature of Kido’s Prog bonus – it builds with every spin of the roulette wheel until won. Id. (“Each time the wheel is spun, 0.5% of the amount wagered is added to the progressive jackpot, and thus, the jackpot’s value reflects multiple spins of the roulette wheel.”). Thus, according to Patent Owner, the value of the jackpot is determined using multiple spins of the roulette wheel and is not “for a spin of the roulette wheel” as claimed.” Id. at 30. The claims, however, only require a first payout that is higher than a second payout. Nothing prohibits the higher payout from accumulating from prior spins of the roulette wheel because, when it is actually won, it will be for that last spin of the roulette wheel. Ex. 1005, 8:35–36 (“indicating that the first player is to be paid at the first payout for the spin of the roulette wheel”). Regardless of how Kido’s Prog bonus accumulated, it is paid for a spin of the roulette wheel – at that juncture Kido discloses each claim element. Anticipation occurs when a prior art reference discloses every element of a patent claim at a point in time, as Kido does with a single spin of the roulette wheel that pays the Prog bonus. As persuasively explained by Petitioner, “the steps of Figure 12 (including A13) occur within a single round of roulette, for a single spin of the roulette wheel, until the routine ‘returns to the step of A1 and is transited to a next game.’” Pet. 39 (quoting Ex. 1007 ¶ 233).” slip op. at 13

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 10,629,024
• Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentable
  PTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision

  Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22

  Patent outcomesUS 11,333,007 mixed
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,333,007
• Volkswagen Group Of America, Inc. v. Longhorn Automotive Group LLCInstituted
  PTAB · Dec 8, 2025 · IPR2025-01064 · APJ George R Hoskins · IPR · Institution

  The Board instituted IPR of claims 1–18 on all four §103 grounds, finding a reasonable likelihood that Volkswagen would prevail on at least claim 1 over Weese.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “A. Legal Standards — Petitioner’s Burden “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 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect in March 2013. The ’353 patent issued from an application filed in September 2004. See Ex. 1001, code (22). Thus, we apply the pre-AIA version of § 103. grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’353 patent “would have possessed at least a four-year degree in physics, biophysics, medical physics, or a related field, and two years of experience in developing and/or applying computed tomography methods,” wherein “[a]dditional education and professional experience are interchangeable.” Pet. 1; Ex. 1003 ¶¶ 54–55. “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s formulation of ordinary skill in the art, as it appears to be consistent with the ’353 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Expert testimonyOther

    “unpatentable as having been obvious over Weese, including supporting testimony from Dr. Peterson. See Pet. 17–22, 26–83; Ex. 1003 ¶¶ 138–149, 159–257. Patent Owner opposes. See Prelim. Resp. 1–2, 6–7. We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions, as follows.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “(iii) Analysis Based on the present record, we determine Petitioner’s contentions regarding the third step of claim 1 are supported sufficiently by the cited disclosures in Weese and Dr. Peterson’s testimony to justify institution of review. In particular, Weese describes obtaining a plurality of second images of the patient’s internal organs (i.e., PET image I0 in Fig. 1, and PET image I10 in Fig. 3) using a second imaging technique (i.e., PET). See Ex. 1005, Figs. 1, 3, and 6, ¶¶ 47–49, 58–59, 72. In particular, PET image I0 in Figure 1 may be a reconstructed “volume image[]” composed of a plurality of “quasi two-dimensional” “slice images” that, when combined, represent a three-dimensional region inside the patient. Id. ¶¶ 48, 58, 61; see also Pet. 56–57. PET image I10 in Figure 3 may be a similarly reconstructed volume image composed of a plurality of slice images.4 See 4 We do not rely here on Petitioner’s alternative theory that Weese discloses a “plurality” of second images because PET images I0 and I10 are “superposed” images encompassing “several states of motion.” Pet. 58. Ex. 1005 ¶¶ 61, 83–84. Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Also, it appears that PET images I0 and I10 are obtained while also obtaining second movement measurements of the patient’s internal organs using a second sensor system (i.e., motion acquisition unit 12 and motion sensor 15 / S1) which is independent from the PET imaging technique. See Ex. 1005, Figs. 1 and 6, ¶ 65 (“[T]he respiratory motion is determined during the acquisition of the PET projections P1 by means of a respiratory motion sensor provided on the patient and therefrom the frequency function f(r) or, more generally, a state of motion function F1 is derived for the construction of the motion model M2.”). Furthermore, Weese describes how frequency function f(r) is utilized to facilitate image comparison between CT and PET images at common motion states. See id. ¶¶ 31, 49–51, 70–71, 75–77, 79–80, 83; see also Ex. 1003 ¶¶ 214–216 (Dr. Peterson’s supporting testimony). Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Patent Owner’s two opposing arguments are unavailing, based on the present preliminary record. First, Petitioner relies on reconstructed PET images I0 and I10 as satisfying the “plurality of second images” recited in claim 1, not PET projections P1 from which PET images I0 and I10 are derived. See, e.g., Pet. 56, 58 (“I0 and I10 disclose and render obvious a ‘plurality of second images’ in two ways” — “I0 and I10 may be ‘volume images’ formed using ‘known’ techniques,” and “I0 and I10 are ‘superposed’ PET images encompassing ‘several states of motion,’ which” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,265,353
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 5, 2025 · IPR2025-00903 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim-966 combination renders the claims obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’110 patent. Accordingly, we institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “966 renders obvious this limitation. See Pet. 50–53. With respect to the “first signaling,” Petitioner argues that the combination teaches “the UE [user equipment] receiving a ‘system information block (‘SIB’) (a first signaling) which can include various types of information such as ‘information about the allocation of subframes to uplink/downlink and configuration of the special subframe in the case of TDD [time division duplexing].” Id. at 43 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 21, 65; Ex. 1003 ¶ 100). Petitioner argues that “[b]ecause the SIB assigns time resources or an ‘allocation of subframes for uplink/downlink,’ an SIB would be understood to function as and render obvious as assigning the UE a collection of time intervals (e.g., subframes) or ‘time resource pools.’” Id. at 51 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 60–61, 64–78, 84; Ex. 1003 ¶ 113). Petitioner contends that “a POSITA would have understood and found obvious that the first signaling (SIB) is used to determine an ‘allocation of subframes to uplink/downlink’ (a first time resource pool) through an assignment of a Time Division Duplexing (TDD) configuration.” Id. (citing Ex. 1003 ¶ 113). Petitioner submits that “[t]he TDD configuration would identify a series of subframes available for uplink and downlink (a first time” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 2. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Mandayam, Petitioner contends that an ordinarily skilled artisan for the ’110 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 12. Petitioner additionally contends “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Id. Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’110 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,546,110
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 5, 2025 · IPR2025-00908 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that claims 1–20 are obvious over Fakoorian-1 and Takahashi.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2024); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’639 patent. Accordingly, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 3. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’639 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 3. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “We find that Petitioner has shown sufficiently on this record that the combination of Fakoorian-1 and Takahashi teaches limitations [1d] and [1e]. See Pet. 21–28. As Petitioner argues, Fakoorian-1 includes multiple SPS configurations and teaches that configuration parameters, related to a first and a second SPS configuration, may be sent to the UE in one or more RRC messages. See Pet. 21, 23–24. These parameters include a “periodicity,” “CS-RNTI,” “HARQ process number,” and “service type.” Id. at 21, 24. Petitioner has also shown sufficiently, based on the testimony of Dr. Mandayam, which at this stage stands unrebutted, that a person of ordinary skill in the art would have understood that a “HARQ process number” is “used to indicate which [SPS] configuration(s) are to be” released, and Fakoorian-1’s UE acknowledges the “release by transmitting the acknowledgement in a codebook through a physical uplink control channel (PUCCH) resource.” Id. at 23. As Dr. Mandayam testifies, a person of ordinary skill in the art would have understood, based on Fakoorian-1, that a HARQ process number indicates an identifier for the HARQ codebook to be used by the UE to transmit the acknowledgment. Id. (citing Ex. 1003 ¶ 84). Dr. Mandayam provides sufficient reasoning, at this stage, to support his opinion, so we do not agree with Patent Owner that this testimony is conclusory. See Ex. 1003 ¶¶ 80–84. Thus, on this record, we find that this testimony is sufficient.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,108,639
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 2, 2025 · IPR2025-00905 · APJ Scott A Daniels · IPR · Institution

  The Board instituted review of claims 1–5, 7–11, 13–17, and 19–23 on all asserted grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314(a), an 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’581 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Neither party proposes any claim constructions at this stage. Pet. 19– 20; Prelim. Resp. 2. Where there is no dispute we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. 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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted

    “c) Conclusion as to Independent Claim 1 We have considered and find persuasive, at this stage, Petitioner’s arguments and supporting evidence as set forth at pages 31–45 of the Petition with respect to the remaining limitations [1pre]–[1f] and [1i]. Patent Owner does not contest Petitioner’s arguments as to these remaining limitations. Also, Dr. Ding’s testimony is currently unrebutted. Accordingly, we determine that Petitioner has shown a reasonable likelihood that Yeo alone, or the combined teachings of Yeo and TS36 render independent claim 1 obvious.” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,917,581
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 2, 2025 · IPR2025-00894 · APJ Scott A Daniels · IPR · Institution

  The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’767 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “under 112(f) pointing out the respective functions and structure disclosed in the ’767 patent specification. Pet. 18–20. Patent Owner does not dispute the construction of these terms, stating only “that claim construction is not required to resolve any issues.” PO Resp. 2 (citing Pet. 18–20). Where there is no dispute and our Decision does not turn on any particular construction of these terms, we need not decide at this point whether “receiver module” and “transmitter module” invoke means-plus-function under 112(f). Pet. 13; Prelim. Resp. 5. And, because there is no dispute, we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. 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” slip op. at 10

  • BurdenInstituted

    “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 1889, 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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,462,767
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 21, 2025 · IPR2025-00906 · APJ Justin T Arbes · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedOther

    “2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 14 (citing Ex. 1003 ¶¶ 39–42). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 7. Based on the record presented, including our review of the ’434 patent and the types of 2 Petitioner states that it “assumes for purposes of [its Petition] that the claims are entitled to the earliest claimed priority date—November 5, 2019.” Pet. 14; see Ex. 1001, code (60). problems and solutions described in the ’434 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 10. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 49. He explains in detail how, based on his experience, emails sent to a 3GPP email exploder were accessible on the email archive immediately after being sent. Id. ¶¶ 44–60, 72–80. That explanation is supported by screenshots from various websites and other corroborating evidence. See Ex. 1008 ¶¶ 44–60, 72–80. The November 3, 2019, email with 3GPP-38.213-CR as an attachment is currently available to the public via the email archive, with no login, password, or membership required to access it. Id. ¶¶ 44, 74; see Kyocera, 545 F.3d at 1351 (“[ETSI] specifications themselves were visible to any member of the interested public without requesting them from an ETSI member. Further, ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.”). The metadata for the file indicates that it was created and last modified one day before the email was sent. Ex. 1008 ¶ 76. And Mr. Rodermund discusses one example where a listserv email was uploaded to the archive just minutes after being sent. Id. ¶¶ 50–51. Although that example is from 2025 rather than 2019, it provides some support for his opinion that the same “near contemporaneous” timing would have been the case in 2019 as well. See id. ¶ 52. Immediately making emails like the one with the 3GPP-38.213-CR change request available on the email archive is consistent with 3GPP’s overall purpose of making standards documents available “so that engineers and other individuals would have ready access to them when developing and implementing cellular networks and devices.” See id. ¶ 35; Kyocera, 545 F.3d at 1351 (finding that the “primary purpose of the [standard at issue] was to develop a system interoperable across national borders,” which “made it crucial to grant access to any interested parties”); Cradlepoint, Inc. v. Sisvel Int’l S.A., IPR2020-01103, Paper 46 at 13–14 (PTAB Jan. 18, 2022) (finding, based on the preponderance of the evidence, that “testimony concerning [a 3GPP] email exploder and listserv provide further support for a conclusion of public accessibility because it tends to show that 3GPP was known beyond its members, that the meetings were widely publicized, and that 3GPP documents were, in general, widely available”). Finally, Mr. Rodermund explains in detail how a person of ordinary skill in the art could have accessed the email with 3GPP-38.213-CR, using the indexing of the email archive. See Ex. 1008 ¶¶ 49, 53–60. We are persuaded that Mr. Rodermund’s testimony and supporting evidence are sufficient at this stage. Patent Owner will have the opportunity to cross-examine Mr. Rodermund and explore the bases for his statements. And our ultimate determination of the weight to be given to his testimony will be based on the complete record at the end of trial. Based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that 3GPP-38.213-CR is a prior art printed publication under 35 U.S.C. § 102(a)(1).” slip op. at 20

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “is that Petitioner has not shown sufficiently that 3GPP-38.213-CR and 3GPP-38.212-CR are prior art printed publications. Prelim. Resp. 2–10. We disagree on this record for the reasons explained above. See supra Section II.D.4. Patent Owner does not dispute Petitioner’s arguments regarding the limitations of claim 1 or Petitioner’s asserted motivation to combine the references. See Prelim. Resp. 2–10. Petitioner’s contentions are supported by the testimony of Dr. Mandayam and are persuasive based on the current record. See Pet. 14–48; Ex. 1003 ¶¶ 52–67, 81–113. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 28

  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 10,965,434
• Vizio, Inc. / LG Electronics, Inc. et al. v. Multimedia Technologies Pte. Ltd.All claims unpatentable
  PTAB · Nov 19, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious over either of two combinations: Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth; or Kim, Ma, Hunt, and Hunleth.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. We deem Dr. Houh to have the requisite qualifications to provide opinion testimony, including obtaining “a Ph.D. in Electrical Engineering and Computer Science from MIT, where his research focused on building high-speed networks and developing applications for remote video capture, processing, and display—technologies central to the ’384 Patent.” Pet. Reply 29 (citing Ex. 1003 ¶¶ 7, 10–13). The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Dr. Houh’s industry experience establishes that he at least possesses ordinary skill in the art, and we do not disqualify his testimony. See Ex. 1003 ¶¶ 7, 10–13. We consider the factors raised by the parties in weighing his testimony with other evidence provided, including the facts and data on which it is based, in reaching our determinations here.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). Patent Owner agreed with and adopted this definition. PO Resp. 18; Ex. 2002 ¶ 40. The definition proposed by Petitioner is consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “As neither the claim language nor the specification provides the necessary support for a construction requiring exclusion of specific information from either view, we decline to adopt such a construction. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (claim constructions that exclude a particular element must find support either in the words of the claim or through “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.”). As reviewed above, the claim language and specification, while describing different things that would be present in elements could not be common to both views. To the extent Patent Owner’s proposed construction specifies elements to be excluded, we find no support for these exclusions, and in fact, find opposite language in the specification of the ’384 patent: while Patent Owner proposes that a detail view must not include “information that is associated with a series,” the specification describes a detail view as provided in the case where “a series with only a single episode” has been selected. Ex. 1001, 44:64–65. This is consistent with the possibility in the claims that a detail view may relate to “a single show.” Ex. 1001, 56:66, 57:36, 58:51. As discussed, the claims recite that a detail view is provided “if [a] selection . . . is for one of a movie or single show” and that the detail view “presents information about a selected item of the VOD content” and a that a digest view is provided “if the selection in the collection view is for a series” and that digest view “provides a listing of two or more episodes associated with a series.” See, e.g., Ex. 1001, 57:23–27, 57:31–37. Thus, by the language of the claims themselves, the provision of “either a detail view or a digest view” relates to the received third selection and is based on what that selection was. The “either . . . or” in the claim thus relates directly to the third selection and not to the resulting views. This is consistent with Dr. Surati’s testimony. See Ex. 2002 ¶ 67 (The claims “present[] the third selection as a binary choice: either the third selection is a series (in which case the digest view is presented), or the third selection is a movie or single show (in which case the detail view is presented).” While Patent Owner insists that the language and logic of the claim “excludes providing a view that can be both a detail view and a digest view,” (PO Resp. 21) we determine that this proposed negative limitation finds no support through the Therefore, we decline to adopt the proposed claim construction that further limits the plain language of the claims. Having rejected the proposed limitations on the plain language of the claims, we find that no further construction of the claim language is required in order to address the dispute before us. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, including Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. We determine that Petitioner has sufficiently shown one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶ 104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 38

  Patent outcomesUS 9,578,384 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 9,578,384
• Vizio, Inc. v. Multimedia Technologies Pte. Ltd.All claims unpatentable
  PTAB · Nov 19, 2025 · IPR2024-00723 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–12 are unpatentable as obvious under §103 over either Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, or Kim, Ma, Hunt, and Hunleth.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “As neither the claim language nor the specification provides the necessary support for a construction requiring exclusion of specific information from either view, we decline to adopt such a construction. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (claim constructions that exclude a particular element must find support either in the words of the claim or through “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.”). As reviewed above, the claim language and specification, while describing different things that would be present in elements could not be common to both views. To the extent Patent Owner’s proposed construction specifies elements to be excluded, we find no support for these exclusions, and in fact, find opposite language in the specification of the ’384 patent: while Patent Owner proposes that a detail view must not include “information that is associated with a series,” the specification describes a detail view as provided in the case where “a series with only a single episode” has been selected. Ex. 1001, 44:64–65. This is consistent with the possibility in the claims that a detail view may relate to “a single show.” Ex. 1001, 56:66, 57:36, 58:51. As discussed, the claims recite that a detail view is provided “if [a] selection . . . is for one of a movie or single show” and that the detail view “presents information about a selected item of the VOD content” and a that a digest view is provided “if the selection in the collection view is for a series” and that digest view “provides a listing of two or more episodes associated with a series.” See, e.g., Ex. 1001, 57:23–27, 57:31–37. Thus, by the language of the claims themselves, the provision of “either a detail view or a digest view” relates to the received third selection and is based on what that selection was. The “either . . . or” in the claim thus relates directly to the third selection and not to the resulting views. This is consistent with Dr. Surati’s testimony. See Ex. 2002 ¶ 67 (The claims “present[] the third selection as a binary choice: either the third selection is a series (in which case the digest view is presented), or the third selection is a movie or single show (in which case the detail view is presented).” While Patent Owner insists that the language and logic of the claim “excludes providing a view that can be both a detail view and a digest view,” (PO Resp. 21) we determine that this proposed negative limitation finds no support through the Therefore, we decline to adopt the proposed claim construction that further limits the plain language of the claims. Having rejected the proposed limitations on the plain language of the claims, we find that no further construction of the claim language is required in order to address the dispute before us. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, including Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. We determine that Petitioner has sufficiently shown one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶ 104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 38

  • Strike new argumentNew argument consideredDecided for petitioner

    “Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” PTAB Consolidated Trial Practice Guide (Nov. 2019)15 (“CTPG”), 74. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Id. at 73. “Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed” slip op. at 49

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We find that Petitioner has sufficiently shown that each of the TechnoBuffalo 1:09 view and the MissingRemote 1:54 view teaches or suggests the presentation of “information about a set of the VOD content that are associated with a series,” as recited. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the 13 We note that, applying Patent Owner’s requested claim construction for “providing either a detail view . . . or a digest view . . .” in full would lead to the same result with respect to, for example, the TechnoBuffalo 1:09 view and the Missing Remote 1:54 view. Each of these teach “a view of information about a set of the VOD content that are associated with a series without information only about a single episode” (as they contain information regarding multiple episodes, see supra footnote 10 and PO Surreply 6) but not “a view of information about a single episode without information that is associated with a series.” Additionally, Petitioner persuasively argues that the prior art demonstrates that “a POSITA would have avoided using UI designs for a TV series to display a single movie, and vice versa. Pet. 49–50 (citing Ex. 1003 ¶¶ 183–184) digest view. Additionally, Petitioner sufficiently shows the presentation of a screen including information about a movie if a movie has been selected from a collection view, and information about a set of content associated with a series if a series was selected, as per the recitations of limitations 1.6 and 1.7 of claim 1. TechnoBuffalo and MissingRemote teach digest view screens relating to a series selection, Hunt and Hunleth teach information screens responsive to a movie or single show selection, and the combination and cited testimony support the provision of the appropriate screen in response to the user’s selection from a collection view, as detailed above with respect to Petitioner’s allegations.” slip op. at 44

  Patent outcomesUS 9,578,384 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 9,578,384

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.