• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Aug 27, 2026 · IPR2024-01310 · APJ Stephen E Belisle · IPR · Remand

  On Director remand, the Board determined claims 1–15 unpatentable under § 103, including claims 1–11 over Ellis, Spivey, and Herzog.

  RulingsRemand decision

  • RemandOther

    “all Challenged Claims unpatentable and denying Petitioner’s Motion to Exclude. Paper 47 (“Original Final Decision”). Subsequently, Patent Owner filed a Request for Director Review and Petitioner filed an authorized Response thereto. Papers 48, 49. On July 29, 2026, the Director granted review, vacated-in-part the Original Final Decision, and remanded the case to the Board. Paper 50. In particular, the Director directed the Board “to consider Patent Owner’s arguments as to the webserver limitation in deciding whether Petitioner has established by a preponderance of the evidence that claims 1–11 are unpatentable under Petitioner’s Ground 1B.” Id. at 4. We do so in this Final Written Decision on Remand (“Remand Decision”). See infra § III.E (Ground 1B). For completeness, we repeat herein our analysis in the Original Final Decision for all other grounds.” slip op. at 2

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

    “C. Claim Construction We construe claims “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); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In this context, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips, 415 F.3d at 1312–13; see CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (There is “a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.”). “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). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Petitioner contends that “[t]he claim terms of the ’218 [patent] should be given their plain and ordinary meaning” as understood by the relevant artisan. Pet. 6. Petitioner argues that the relevant artisan “would have understood a ‘socket’ to be a uniquely addressable communication endpoint on a server where first event information is provided to a [viewer client device] VCD.” Pet. 26 (citing Ex. 1001 ¶ 170). Petitioner argues that the relevant artisan also would have understood an “event socket,” in turn, to be “a socket where information about one sporting event is provided to VCDs.” Id. Beyond such proposed plain meanings for “socket” and “event” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “(6) Conclusion as to Objective Indicia of Non- Obviousness For the foregoing reasons, although we have considered Patent Owner’s evidence of objective indicia of nonobviousness, we accord it little weight, and find that it does not outweigh Petitioner’s strong countervailing evidence supporting a conclusion of obviousness.” slip op. at 53

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

    “engineer with substantial experience in Internet video streaming, Internet communication, and related protocols, including an understanding of relaytype and orchestrator-type webservers, would have considered the subject matter of claim 1 as a whole, including the webserver, to be obvious in light of the combined teachings of Ellis, Spivey, and Herzog. Based on the context discussed above, and for the reasons provided above, we determine that the answer is yes. See Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1222 (Fed. Cir. 2022) (“That the proposed combination of [two references]—rather than one of the individual references—discloses the disputed claim limitations does not defeat the Board’s conclusion of obviousness. In this case, it is sufficient that [the relevant artisan] would have been motivated to combine the prior art in a way such that the combination discloses the claim limitations.”).” slip op. at 78

  Patent outcomesUS 11,039,218 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,039,218
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01311 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 16–30 are unpatentable: claims 16–30 as obvious over Ellis and Spivey, claims 21, 22, 27, and 28 as anticipated by Herzog, and claims 25, 26, and 30 as obvious over Herzog and Ellis.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contends that the relevant artisan would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” PO Resp. 12. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. We apply Patent Owner’s definition of the relevant artisan because, based on the record, this proposal is most consistent with the ’218 patent and the asserted prior art, and is supported by the testimony of both Dr. Wicker and Dr. Rubin (see Ex. 1001 ¶¶ 72–76; Ex. 2001 ¶¶ 96–98). We note that we would reach the same determination under Petitioner’s formulation of the level of ordinary skill.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Accordingly, Petitioner’s proposed plain meanings of “socket” and “event socket” (Pet. 32–33) are not disputed by Patent Owner. PO Resp. 2, 12. In fact, by arguing that Spivey’s topic queues are neither “uniquely addressable” nor “communication endpoints,” Patent Owner appears to adopt Petitioner’s proposed plain meaning of “socket” as a “uniquely addressable communication endpoint.” Id. As Patent Owner acknowledged during Oral Argument, “I don’t think there’s any dispute of what we mean by socket, a uniquely addressable communication endpoint.” Tr. 73:10–12. Based on the foregoing, we construe each of “socket” and “event socket” to have its plain and ordinary meaning, where the relevant artisan would have understood “socket” to mean “a uniquely addressable communication endpoint on a server,” and “event socket” to mean “a socket where information about one sporting event is provided to a viewer client device (VCD).” 2 We further address these terms below in Section III.D.3. 2 During Oral Argument, Patent Owner argued, for the first time, that the District Court’s construction of “event socket” “should be applied equally here.” Tr. 73:13–76:24 (referring to Ex. 1069). The Court adopted Petitioner’s (Defendant’s) proposed definition of “event socket” as “a socket dedicated to a particular event” (Ex. 1069, 11–15), although in its summary of constructions, labeled “event socket” as being “a socket dedicated to a single event” (i.e., “single” event versus “particular” event) (id. at 26). Regardless, in the context of this case and this Decision, we find no meaningful difference between these articulations and Petitioner’s plain” slip op. at 15

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

    “As Petitioner explained during Oral Argument, Ellis “relates to the ability for the clients and the server to communicate,” which can be any system that can “provide real-time sports,” but “doesn’t discuss whether it’s a push system or a pull system,” whereas Spivey, on the other hand, “expressly indicates that it is a push type of data system which reduces latency over prior art systems that utilize push technologies.” Tr. 15:13–19. We find availing Petitioner’s contention that, “[a]s explained by Dr. Wicker, . . . [the relevant artisan] would have been motivated to implement real-time data delivery using Spivey’s data pushing technique to reduce latency.” Id. at 16:2–8. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We find unavailing Patent Owner’s contention that Petitioner fails to “articulate why [the relevant artisan] would have been motivated to make the necessary modifications and proposed combination.” PO Resp. 40–41. Here, Petitioner points out that its proposed combination would have been made to improve latency issues in Ellis’s system. Pet. 23–26. In particular, Spivey discloses that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data to the “subscribed connected client devices” substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., “with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”).” slip op. at 28

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “Considering the totality of the evidence, we find Patent Owner has not demonstrated that a long-felt but unresolved need existed for the claimed invention. See Apple v. Samsung, 839 F.3d at 1056. As Petitioner points out, although Patent Owner argues that there is a long-felt need for a system that “allows broadcasters to deliver synchronized, low-latency video and audio content” (PO Resp. 65), Patent Owner does not contest Petitioner’s showing that Ellis also discloses “a video streaming system that provided event information over a separate channel, which is not hard embedded in the video stream.” Pet. Reply 25. Further, as Petitioner points out in the context of “representative claim 12,” the claim “simply requires ‘receiv[ing] the first copy via a first video communication channel between at least one media source and the first client device,’” and “[i]n no way does that claim language relate to any synchronized, low-latency, scalable, flexible, or new and improved video streaming technique.” Pet. Reply 22. In fact, during Oral Argument, although Patent Owner argues that its invention is “the synchronization and the latency improvements through that one-to-many socket architecture,” Patent Owner conceded that the claims “could be broader than that.” Tr. 44:24–46:16. We find availing Petitioner’s argument that the “claim language” does not “relate to any synchronized, low-latency, scalable, flexible, or new and improved video streaming technique.” Pet. Reply 22. Petitioner argues that we should give “no weight” to Patent Owner’s alleged “evidence” of any long-felt but unresolved needs. Pet. Reply 22. In particular, Patent Owner merely provides conclusory statements that, prior to the claimed invention, “conventional video streaming systems” included “hard-embedded event information,” and that “[t]he claimed invention satisfied the long-felt need for an innovative system.” PO Resp. 64–65. Thus, considering the totality of the evidence, we agree with Petitioner that Patent Owner has failed to establish that there was a long-felt but unresolved need for the claimed invention.” slip op. at 51

  Patent outcomesUS 11,039,218 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,039,218
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01310 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 12–15 over Ellis and Spivey, and claims 1–11 over Ellis, Spivey, and Herzog; the other grounds were not proven.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Relying on Dr. Wicker’s testimony, Petitioner contends that the relevant artisan would have had “at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 14 (citing Ex. 1001 ¶¶ 72–76). Petitioner also states that “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Pet. 18. Patent Owner contends that the relevant artisan would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” PO Resp. 12 (citing Ex. 2001 ¶ 96). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. We apply Patent Owner’s definition of the relevant artisan because, based on the record, this proposal is most consistent with the ’218 patent and the asserted prior art, and is supported by the testimony of both Dr. Wicker and Dr. Rubin (see Ex. 1001 ¶¶ 72–76; Ex. 2001 ¶¶ 96–98). We note that we would reach the same determination under Petitioner’s formulation of the level of ordinary skill.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Accordingly, Petitioner’s proposed plain meanings of “socket” and “event socket” (Pet. 26) are not disputed by Patent Owner. PO Resp. 2, 12. In fact, by arguing that Spivey’s topic queues are neither “uniquely addressable” nor “communication endpoints,” Patent Owner appears to adopt Petitioner’s proposed plain meaning of “socket” as a “uniquely addressable communication endpoint.” Id. As Patent Owner acknowledged during Oral Argument, “I don’t think there’s any dispute of what we mean by socket, a uniquely addressable communication endpoint.” Tr. 73:10–12. Thus, we give each of “socket” and “event socket” its plain meaning, where the relevant artisan would have understood “socket” to mean “a uniquely addressable communication endpoint on a server,” and “event socket” to mean “a socket where information about one sporting event is provided to a viewer client device (VCD).” 4 We address such terms below in Section III.D.3. After considering the arguments and information presented during trial, we determine that we do not need to otherwise expressly construe any terms in order to resolve the dispute between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Petitioner’s contentions with Dr. Wicker’s supporting testimony persuasive. In particular, we find Petitioner’s reliance on Spivey for disclosing “event socket” is supported by Spivey’s disclosures that a topic queue’s address “may resemble a uniform resource locator (URL)” and that user interface 900 “allow[s] an operator 108 of a client device to view and select . . . topics available from a message queue server.” Ex. 1017 ¶¶ 82, 84, Fig. 9. In Spivey, the message flow begins “when message queue server . . . pushes data payloads to subscribers of the topics in [the] message.” See Ex. 1017 ¶ 134. As Petitioner explains, in Spivey, “the address for connecting a topic queue may resemble a URL, and client devices can select from a list of available topics and subscribe to those queues, after which the MQSD pushes the relevant data payloads to the subscribed devices.” Pet. Reply 8 (citing Ex. 1017 ¶¶ 82–84, 134). As Petitioner explains, and as supported by Dr. Wicker’s testimony, Spivey’s “topic label may be . . . ‘gamecenter.nfl.ravensteelers,’ and client devices use these topic label text strings to connect and subscribe to the MQSD’s topic queues.” Pet. Reply 8 (citing Ex. 1001 ¶¶ 353–354). We find availing that, in Spivey, since the “client devices ‘request a live data connection’ by selecting or entering the address or connection information which ‘may resemble a uniform resource locator (URL),’” Spivey’s topic queues “are not only logically but also actually implemented as uniquely addressable communication endpoints.” Id. at 9 (citing Ex. 1064 ¶¶ 11–14). We find that Dr. Rubin’s testimony that the only potential “communication endpoint” in Spivey that is “uniquely addressable” is the live data access server (Ex. 2001 ¶ 233) merely addresses particular embodiments in Spivey. That is, Dr. Rubin does not address sufficiently Spivey’s teachings as a whole as understood from the perspective of the relevant artisan, which would include other embodiments. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008) (“What a prior art reference discloses or teaches is determined from the perspective of one of ordinary skill in the art.”); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (noting that when evaluating claims for obviousness, “the prior art as a whole must be considered”). Dr. Rubin does not address Spivey’s disclosure that the system “may include” the LDAS (Ex. 1017 ¶ 38), but, as Petitioner points out, merely acknowledges that “there are examples in Spivey using the language [‘may’].” Pet. Reply 4 (citing Ex. 1063, 62:8–13). As Petitioner points out, in his deposition, Dr. Rubin acknowledges” slip op. at 29

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

    “As Petitioner explained during Oral Argument, Ellis “relates to the ability for the clients and the server to communicate,” which can be any system that can “provide real-time sports,” but “doesn’t discuss whether it’s a push system or a pull system,” whereas Spivey, on the other hand, “expressly indicates that it is a push type of data system which reduces latency over prior art systems that utilize push technologies.” Tr. 15:13–19. We find availing Petitioner’s contention that, “[a]s explained by Dr. Wicker, . . . [the relevant artisan] would have been motivated to implement real-time data delivery using Spivey’s data pushing technique to reduce latency.” Id. at 16:2–8. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We find unavailing Patent Owner’s contention that Petitioner fails to “articulate why [the relevant artisan] would have been motivated to make the necessary modifications and proposed combination.” PO Resp. 40–41. Here, Petitioner points out that its proposed combination would have been made to improve latency issues in Ellis’s system. Pet. 20–22. In particular, Spivey discloses that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data to the “subscribed connected client devices” substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., “with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”). We find Patent Owner’s arguments that Petitioner fails to “explain the modifications necessary to combine such teachings” are inconsistent with the evidence of record. PO Resp. 40–47. For example, Patent Owner’s argument that the proposed combination would be inoperable because the combination “does not include the LDAS” (id. at 43–44) is not consistent with the evidence of record that Spivey does not require the LDAS to serve as intermediary between the MQSD and the user equipment. See Ex. 1017 ¶¶ 38, 46. As discussed above, Spivey states that the system “may” include an LDAS (Ex. 1017 ¶ 38), supporting Petitioner’s contention that, in Spivey, the LDAS is “optional” wherein “the MQSD may be ‘accessible to clients over the network directly.’” Pet. Reply 3. As discussed above in Section III.D.3.a, we find persuasive Petitioner’s argument that Spivey’s MQSD may push data from topic queues to the subscribers of the topics corresponding to those topic queues, which indicates that “the MQSD can deliver data directly to clients without the necessity of an LDAS.” Id. (citing Ex. 1017 ¶ 46).” slip op. at 39

  Patent outcomesUS 11,039,218 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,039,218
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Mar 11, 2026 · IPR2024-01305 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–9 are unpatentable: claims 1, 8, and 9 as obvious over Ellis and Spivey, and claims 2–7 as obvious over Ellis, Spivey, and Herzog.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Relying on the declaration of Dr. Wicker, Petitioner contends that a person of ordinary skill in the art (POSA) at the time of the invention of the ’687 patent would have had “at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 13 (citing Ex. 1001 ¶¶ 72–76). Petitioner also states that “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. Patent Owner contends that a POSA at the time of the invention of the ’687 patent would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” PO Resp. 13 (citing Ex. 2001 ¶ 99). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We apply Patent Owner’s definition of a POSA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’687 patent, the asserted prior art, and is supported by the testimony of Dr. Wicker. We note that we would reach the same determination under Petitioner’s formulation of the level of ordinary skill.” slip op. at 12

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

    “Patent Owner contends that the plain and ordinary meaning should apply to all terms of the challenged claims except for “event socket.” PO Resp. 12. Petitioner argues that an “event socket” should be construed as “uniquely addressable communication endpoints that transmit event information.” Pet. Reply 8–10. Patent Owner does not disagree with Petitioner’s proposal. See generally PO Sur-Reply. As the parties do not dispute the meaning of “event socket,” we need not, and do not, expressly construe the term beyond the parties agreed meaning. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 10

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

    “We agree with Petitioner’s contention that Ellis and Spivey differ in that Ellis uses HTTP request-response messages whereas Spivey uses websocket connections between the content delivery system’s server and user equipment. Pet. 18 (citing Ex. 1001 ¶¶ 106–115). As Petitioner points out, in Ellis’s HTTPS connections, a user equipment requests the server to respond with any new messages. Id. at 8 (citing Ex. 1001 ¶¶ 50, 51); Ex. 1016 ¶¶ 37, 40. We agree with Petitioner that Spivey’s websocket connections were a known alternative to HTTP requests. Id. (citing Ex. 1001 ¶¶ 52, 53, 58, 59). We further agree that such websockets constitute bidirectional, full-duplex, stateful, and persistent connections that provide instant updates from the server to the user equipment without the need for the user equipment to request them from the server (referred to as “push” technology). Id. Accordingly, we agree with Petitioner that, under some scenarios, a POSA would have viewed Spivey’s websocket connections as more advantageous for providing video content and event data to end-users than Ellis’s HTTP request-response protocol, thus motivating simple substitution of Spivey’s LDSD and MQSD for Ellis’s SCS. Pet. 21–22 (citing Ex. 1016 ¶¶ 34, 47; Ex. 1017 ¶ 34; Ex. 1001 ¶¶ 114, 115). See KSR, 550 U.S. at 417 (simple substitution of one known element for another is a recognized rationale supporting a motivation to combine). For example, if server requests are frequent, a POSA would have recognized that the processing overhead of setting up and tearing down HTTP connections would exceed any latency disadvantages of Spivey’s persistent websocket connections. Ex. 1064 ¶ 35. Thus, under some circumstances, a POSA would have been motivated to make the Ellis-Spivey combination, and we do not agree with Patent Owner’s arguments to the contrary.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia no nexusDecided for petitioner

    “Considering the totality of the evidence, we find Patent Owner has not demonstrated that a long-felt but unresolved need existed for the claimed invention. See Apple, 839 F.3d at 1056. As Petitioner points out, although Patent Owner argues that there is a long-felt need for a system that “allows broadcasters to deliver synchronized, low-latency digital content, such as a video content, and audio content . . . ” (PO Resp. 64), Patent Owner does not contest Petitioner’s showing that Ellis also discloses “a video streaming system that provided event information over a separate channel, which is not hard embedded in the video stream.” Pet. Reply 23. Further, as Petitioner also points out, “claim 1 simply requires a media source to receive the video stream and distribute the video stream.” Pet. Reply 23. In fact, during Oral Argument, although Patent Owner argues that its invention is “the synchronization and the latency improvements through that one-to-many socket architecture,” Patent Owner conceded that the claims “could be broader than that.” Tr. 44:24–46:16. We agree with Petitioner’s argument that the “claim language” does not “relate to any synchronized, low-latency, scalable, flexible, or new and improved video streaming technique.” Pet. Reply 23. Furthermore, as Petitioner points out, Patent Owner does not cite to any evidence of long-felt but unresolved needs. Pet. Reply 23 (citing PO Resp. 66). In particular, Patent Owner merely provides conclusory statements that, prior to the claimed invention, “conventional video streaming systems” include “hard-embedded event information,” and that “[t]he claimed invention satisfied the long-felt need for an innovative system.” PO Resp. 64–66. Thus, considering the totality of the evidence, we agree with” slip op. at 45

  Patent outcomesUS 10,805,687 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,805,687
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01309 · APJ Thu A Dang · IPR · Final written decision

  Claims 19–25 and 27–30 are unpatentable as obvious over Ellis and Spivey; the Board did not find the alternative Herzog, Spivey, and Ellis ground established.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We apply Patent Owner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’697 patent, the asserted prior art, and is supported by the testimony of Dr. Wicker. We note that we would reach the same determination under Petitioner’s formulation of the level of ordinary skill.” slip op. at 10

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

    “And Patent Owner states that it “agree[s] with Petitioner’s construction” with respect to the MPF terms. PO Resp. 13. Although Patent Owner also contends that a “POSITA would understand the ‘means for transmitting’ to be a socket server transmitting through an event socket that implements the algorithms described in Figures 2, 3, 21A–21E and accompanying disclosures” (id.), Patent Owner’s proposed further construction is not disputed by Petitioner. See generally Pet. Reply. Furthermore, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 39) are not disputed by Patent Owner. PO Resp. 2, 13–14. In fact, by arguing that Spivey’s topic queues are neither “uniquely addressable” nor “communication endpoint[s],” Patent Owner appears to adopt Petitioner’s proposed construction of “socket” as a “uniquely addressable communication endpoint.” Id. at 2. As Patent Owner acknowledged during Oral Argument, “I don’t think there’s any dispute of what we mean by socket, a uniquely addressable communication endpoint.” Tr. 73:11–13.6 Thus, on this record, because there is no dispute between the parties regarding the terms “means for transmitting,” “event socket,” or “socket,” construction is not needed. Accordingly, we decline to provide further analysis or an express construction for these terms.” slip op. at 14

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

    “ability for the clients and the server to communicate,” which can be any system that can “provide real-time sports,” but “doesn’t discuss whether it’s a push system or a pull system,” wherein Spivey, on the other hand, “expressly indicates that it is a push type of data system which reduces latency over prior art systems that utilize push technologies.” Tr. 15:13–19. We find availing Petitioner’s contention that, “[a]s explained by Dr. Wicker, . . . a POS[IT]A would have been motivated to implement real-time data delivery using Spivey’s data pushing technique to reduce latency.” Id. at 16:2–4. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We find unavailing Patent Owner’s contention that Petitioner fails to “articulate why a POSITA would have been motivated to make the necessary modification and proposed combination.” PO Resp. 44. Here, Petitioner points out that its proposed combination would have been made to improve latency issues in Ellis’s system. Pet. 19–24. In particular, Spivey’s discloses that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data to the “subscribed connected client devices” substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., “with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”).” slip op. at 51

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “demonstrated that a long-felt but unresolved need existed for the claimed invention. See Apple v. Samsung, 839 F.3d at 1056. As Petitioner points out, although Patent Owner argues that there is a long-felt need for a system that “allows broadcasters to deliver synchronized, low-latency video and audio content. . . . ” (PO Resp. 66), Patent Owner does not contest Petitioner’s showing that Ellis also discloses “a video streaming system that provided event information over a separate channel, which is not hard embedded in the video stream.” Pet. Reply 22–23. Further, as Petitioner also points out, “claim 19 simply requires a media source to receive the live stream of digital content and distribute it.” Pet. Reply 23. In fact, during Oral Argument, although Patent Owner argues that its invention is “the synchronization and the latency improvements through that one-to-many socket architecture,” Patent Owner conceded that the claims “could be broader than that.” Tr. 44:24–46:16. We find availing Petitioner’s argument that the “claim language” does not “relate to any synchronized, low-latency, scalable, flexible, or new and improved video streaming technique.” Pet. Reply 23. Nevertheless, as Petitioner points out, Patent Owner does not cite to any evidence as to any long-felt but unresolved needs. Pet. Reply 23 (citing PO Resp. 67–68). In particular, Patent Owner merely provides conclusory statements that, prior to the claimed invention, “conventional video streaming systems” include “hard-embedded event information,” and that “[t]he claimed invention satisfied the long-felt need for an innovative system.” PO Resp. 66–68. Thus, considering the totality of the evidence, we agree with Petitioner that Patent Owner has failed to establish that there was a long-felt but unresolved need for the claimed invention.” slip op. at 59

  Patent outcomesUS 10,425,697 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,425,697
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01308 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–9 are unpatentable under § 103 over Ellis and Spivey, with Herzog added for claims 2–6; the alternative Herzog, Spivey, and Ellis ground fails.

  RulingsFinal written decision

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On this record, we give “socket” and “event socket” their ordinary and customary meaning. And, as to “socket,” both parties agree that the ordinary and customary meaning for “socket” is a uniquely addressable communication endpoint on a server. Pet. 37; PO Resp. 2. We decline to provide further analysis or an express construction as doing so is not needed to resolve the dispute between the parties. slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Accordingly, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 37) are not disputed by Patent Owner. PO Resp. 2, 12. In fact, by arguing that Spivey’s topic queues are neither “uniquely addressable” nor “communication endpoint[s],” Patent Owner appears to adopt Petitioner’s proposed construction of “socket” as a “uniquely addressable communication endpoint.” Id. As Patent Owner acknowledged during Oral Argument, “I don’t think there’s any dispute of what we mean by socket, a uniquely addressable communication endpoint.” Tr. 73:11–13.6 6 Patent Owner also refers to the District Court’s construction of “event socket” during Oral Argument, by claiming the court’s Claim Construction Order was a part of the record as “Exhibit 1069.” Tr. 73:14–74:17. However, as there is no “Exhibit 1069” in this proceeding, we will not “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On this record, we give “socket” and “event socket” their ordinary and customary meaning. And, as to “socket,” both parties agree that the ordinary and customary meaning for “socket” is a uniquely addressable communication endpoint on a server. Pet. 37; PO Resp. 2. We decline to provide further analysis or an express construction as doing so is not needed to resolve the dispute between the parties.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “person of ordinary skill in the art (POSITA) at the time of the invention of the ’697 patent would have had “at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 13 (citing Ex. 1001 ¶¶ 72–76). Petitioner also states that “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. Patent Owner contends that a POSITA at the time of the invention of the ’697 patent would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” PO Resp. 13. The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We apply Patent Owner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’697 patent, the asserted prior art, and is supported by the testimony of Dr. Wicker. We note that we would reach the same determination under Petitioner’s formulation of the level of ordinary skill.” slip op. at 9

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

    “ability for the clients and the server to communicate,” which can be any system that can “provide real-time sports,” but “doesn’t discuss whether it’s a push system or a pull system,” wherein Spivey, on the other hand, “expressly indicates that it is a push type of data system which reduces latency over prior art systems that utilize push technologies.” Tr. 15:13–19. We find availing Petitioner’s contention that, “[a]s explained by Dr. Wicker, . . . a POS[IT]A would have been motivated to implement real-time data delivery using Spivey’s data pushing technique to reduce latency.” Id. at 16:2–4. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We find unavailing Patent Owner’s contention that Petitioner fails to “articulate why a POSITA would have been motivated to make the necessary modification and proposed combination.” PO Resp. 41. Here, Petitioner points out that its proposed combination would have been made to improve latency issues in Ellis’s system. Pet. 17–21. In particular, Spivey’s discloses that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data to the “subscribed connected client devices” substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., “with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”).” slip op. at 50

  Patent outcomesUS 10,425,697 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,425,697
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 12, 2025 · IPR2024-01126 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted review of claims 1–14 on all three obviousness grounds, finding a reasonable likelihood that claim 1 would have been obvious over Barg and Pintor.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “In evaluating arguments under § 325(d), we use a two-part framework to assess: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part) (“Becton, Dickinson”), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, IPR2019-01469, Paper 6 at 10.4” slip op. at 10

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

    “(xiii) Conclusion for Claim 1 Based on the evidence and arguments of record at this stage of the proceeding, we determine that Petitioner has shown that each element of claim 1 of the ’550 patent is disclosed by the combination of Barg and Pintor. Since Petitioner did not assert that Pintor discloses any limitation of claim 1, we determined that Petitioner did not need to establish a motivation to combine Pintor or reasonable expectation of success in doing so for claim 1. Lastly, Patent Owner’s objective indicia did not relate to claim 1. Accordingly, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combination of Barg and Pintor.” slip op. at 41

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts the following: A POSA9 at the relevant time would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically. . . . Formal education in a relevant field, such as fashion and textile design, may compensate for less experience. Id. Pet. 24 (citing Ex. 1001 ¶ 155). Patent Owner does not address Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s proposed level of skill in the art is consistent with the ’550 patent and the asserted prior art except that we set the level to “two . . . years of experience” because the qualifier “at least two” may render the level ambiguous. Otherwise, we agree with and will use Petitioner’s proposed level for this Institution Decision.” slip op. at 20

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

    “Neither Petitioner nor Patent Owner propose any construction for any claim term in this proceeding. Accordingly, we apply the ordinary and customary meaning to the claim terms without special construction.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,219,550
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 11, 2025 · IPR2024-01127 · APJ Lynne H Browne · IPR · Institution

  The Board instituted IPR on claims 1–8, 12, 13, and 15–18 based on the asserted §103 grounds, finding a reasonable likelihood of prevailing.

  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 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.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’551 patent. Accordingly, we institute an inter partes review of claims 1–8, 12, 13, and 15–18 of the ’551 patent on the grounds asserted in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “cumulative of Boatright. During prosecution of the ’878 patent (which is a parent of the ’551 patent at issue in this proceeding), Boatright was distinguished because it did not have an upper edge of the cup that lies “along a same edge line as at least a portion of a top edge of the chest strap,” as required by claim 1. Prelim. Resp. 15 (citing Ex. 2066, 105). Vidal shows “an upper edge of the side patch lying along a same edge line as at least portion of the top edge of the chest strap” (as required by claim 1) in that Vidal’s Figure shows such alignment. Moreover, Vidal states that the shape of its pocket (i.e. side patch) “can be adapted to the shape of the side strap.” Ex. 1027, 3:19–20. Given these disclosures, Vidal is not cumulative of Boatright. As to Sherwood and Gentry, Patent Owner’s arguments that these references relate to bras with pockets such that Vidal is cumulative to them are unconvincing as Vidal is relied upon to teach more than a bra with pockets. For these reasons, part one of the Advance Bionics framework is not satisfied for Vidal. Both parties agree that Handras was presented to the Office in an Information Disclosure Statement. Pet. Reply 1; Prelim. Resp. 15. Accordingly, the first part of the framework is satisfied for Handras.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of skill in the art “would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically.” Pet. 17–18 (citing Ex. 1001 ¶ 155). Petitioner asserts further that “[f]ormal education in a relevant field, such as fashion and textile design, may compensate for less experience.” Id. 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 proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’551 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “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). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention. See Phillips, 415 F.3d at 1312–13. In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Id. at 1315–17. The parties do not present any claim constructions, and we determine that no formal claim construction is necessary for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”)” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,219,551
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 11, 2025 · IPR2024-01125 · APJ Zhenyu Yang · IPR · Institution

  The Board instituted IPR on claims 1–10 and 18 on all asserted grounds, finding a reasonable likelihood of success on the York–Pintor and Handras–Pintor obviousness grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on all the grounds raised in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “substantially the same as Pintor, for purposes of this Decision, we need not address this issue.10 As discussed below, even if the asserted references are substantially the same, we are persuaded that Petitioner has demonstrated, under the second prong of the Advanced Bionics framework, that the Office erred in a manner material to the patentability. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9. As explained above, during prosecution of the ’288 patent, the examiner rejected the then-pending claims over Newman in view of Pintor. Ex. 1004, 151–52. Petitioner argues, however, that the examiner considered Pintor “only as a secondary reference to Newman.” Pet. 96. According to Petitioner, the examiner “overlooked how a POSA would have understood Pintor’s disclosures and what a POSA would have been motivated to do with them, especially in light of references like Barg, York, and Handras.” Id. at 10. On this record, we find Petitioner’s argument persuasive. Patent Owner does not dispute that Pintor discloses “a bra with left and right cups, shoulder straps, and a chest strap,” and “additionally discloses the bra cups 10 Patent Owner further asserts that the examiner “considered several other patents and patent applications relating generally to bras with pockets, both as provided in an IDS and as a result of the Examiner’s own searching, including U.S. 7,585,200 to McLaren, and U.S. 5,496,205 to Lee.” Prelim. Resp. 17. Patent Owner does not explain the relevance of McLaren and Lee. See generally Prelim. Resp. Such a bare bone assertion is insufficient to show those other patents and patent applications are cumulative to the prior art asserted in the Petition. comprised of polyurethane and the pockets made of elastic material.” Prelim. Resp. 18. The examiner, however, relied on Pintor for teaching a single limitation, that is, Pintor’s pocket “holds the claimed items therein.” Ex. 1004, 152. Patent Owner is correct that, when rejecting the pending claims over Sherwood, the examiner did not have to repeat Pintor’s teachings of the limitations taught in Sherwood. The examiner, however, failed to consider Pintor’s teaching in its entirety after the applicant distinguished the pending claim over Sherwood. Ex. 1006, 92 (the applicant arguing “Sherwood teaches a front padding that is stitched in place” in contrast to the pending claims’ requirement that “the opening is capable of repeated receiving and removal of items when the bra is being worn by the user”). That, in our opinion, is material error.” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “b. Evidence Related to Nike Products Patent Owner argues that there is “a high degree of correspondence between features of [Nike’s] Swoosh on the Run and the claims of the ‘036 patent.” Prelim. Resp. 29 (citing Ex. 2053). The evidence, however, do not support a conclusion that Nike’s Swoosh on the Run is coextensive with the ’036 patent’s claimed invention. Indeed, Patent Owner submits claim charts allegedly showing that Nike’s Swoosh on the Run infringes not only the ’036 patent (Ex. 2053), but also four other patents in the family (Exs. 2054–2057). Those other claim charts demonstrate that Swoosh on the Run includes many features not claimed in the ’036 patent. See e.g., Ex. 2055 (showing Swoosh on the Run has a back pocket). Thus, on this record, Patent Owner has not persuasively shown a rebuttable presumption of nexus between Nike’s Swoosh on the Run and the challenged claims. Patent Owner asserts that “there is significant evidence that NIKE copied the patented application in the ‘036 patent.” Prelim. Resp. 28–29. According to Patent Owner, “NIKE received copies of patents and sample products from [the named inventor of the ’036 patent] Ms. Goff prior to filing its patents or marketing any of the allegedly infringing products.” Id. at 29. Patent Owner alleges that “each of the Swoosh Pocket Bra, the Swoosh Bra, and the Swoosh on the Run has several points of similarity both to the product depicted and described in Ms. Goff’s patents as supplied to NIKE and to the product samples Ms. Goff sent to NIKE.” Id. Ms. Goff testifies that she corresponded with Nike about her Pocket Bar and submitted examples of her products. See Exs. 2001, 2035. Patent Owner’s evidence, however, does not sufficiently demonstrate that a specific product was replicated. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific product.”). In addition, neither Ms. Goff’s testimony nor the Nike Idea Submission is specific to the ’036 patent’s claimed invention. See generally Exs. 2001, 2035. For example, none of the pictures in the Nike Idea Submission sufficiently shows certain feature of the ’036 patent’s claimed invention, which includes “the upper edge of the patch being offset from an upper edge of the cup.” See, e.g., Ex. 2035, 2–4. On this record, Patent Owner has not presented sufficient evidence of copying.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for petitioner

    “Patent Owner asserts that “there is significant evidence that NIKE copied the patented application in the ‘036 patent.” Prelim. Resp. 28–29. According to Patent Owner, “NIKE received copies of patents and sample products from [the named inventor of the ’036 patent] Ms. Goff prior to filing its patents or marketing any of the allegedly infringing products.” Id. at 29. Patent Owner alleges that “each of the Swoosh Pocket Bra, the Swoosh Bra, and the Swoosh on the Run has several points of similarity both to the product depicted and described in Ms. Goff’s patents as supplied to NIKE and to the product samples Ms. Goff sent to NIKE.” Id. Ms. Goff testifies that she corresponded with Nike about her Pocket Bar and submitted examples of her products. See Exs. 2001, 2035. Patent Owner’s evidence, however, does not sufficiently demonstrate that a specific product was replicated. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific product.”). In addition, neither Ms. Goff’s testimony nor the Nike Idea Submission is specific to the ’036 patent’s claimed invention. See generally Exs. 2001, 2035. For example, none of the pictures in the Nike Idea Submission sufficiently shows certain feature of the ’036 patent’s claimed invention, which includes “the upper edge of the patch being offset from an upper edge of the cup.” See, e.g., Ex. 2035, 2–4. On this record, Patent Owner has not presented sufficient evidence of copying.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,808,036
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Jan 3, 2025 · IPR2024-00689 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–34 were obvious over Fukaya or Cai.

  RulingsInstitution decision

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

    “3. Analysis Petitioner has not shown a reasonable likelihood that a person of ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review. Id. at 8–9. Here, as discussed above, the same art that Petitioner relies on — Fukaya and Tsai/Cai — was previously presented to the Office. Thus, Patent Owner has shown that the first part of the Advanced Bionics framework is satisfied. Turning to the second part of the Advanced Bionics framework, we determine that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “3. Analysis Petitioner has not shown a reasonable likelihood that a person of ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide. Petitioner’s expert’s recitation of the at least 25 steps taken to journey from the original Fukaya design to the modified design is instructive: (i) inputting into lens design software the original Fukaya lens parameters; (ii) evaluating its off-axis performance; (iii) increasing the number of analysis field points; (iv) deciding to focus on lenses 5–7, which requires that all aspherics be varied; (v) modifying lens 6 aspherics; (vi) adding CARD operands in the merit function to change the curvature radius values on the lens surfaces; (vii) adding FTGT operands to control spacing between the lenses and lens thicknesses; (viii) adjusting CENY to set the field height; (ix) using a 20x20 rectangular grid of rays for the spot rms part of the merit function; (x) making all aspherics and conics variable, except on the objectside surface of the seventh lens; (xi) increasing the f-number to 2; (xii) increasing sampling to 40x40; (xiii) targeting a positive curvature on the image-side surface of lens 6 with the CVGT 0 operand; (xiv) increasing FTGT to 0.2 on lens 7; (xv) increasing the focal length of lens 6 to 3mm; (xvi) targeting a positive curvature on the object side of lens 7 with the CVGT 0 operand; (xvii) reducing the power of lens 7; (xviii) increasing the target focal length on lens 6; (xix) releasing the focal length constraint on lens 7; (xx) releasing the focal length constraints on lenses 5 and 6; (xxi) reducing f-number in steps to 1.65; (xxii) adding DIMX operands; (xxiii) freezing the conics on surfaces 10 and 14; (xxiv) adding FCGT and FCGS commands to limit field curvature; (xxv) adding LONAs into the merit function — thus “resulting” in the Fukaya lens system with a meniscus-gullwing lens pair for lenses 6 and 7.5 Ex. 1001 ¶¶ 82–85. We are not persuaded that this exercise is sufficiently free of hindsight motivation. For purposes of this Decision, we accept that gullwing/meniscus designs were well-known as of the priority date.6 However, the fact that such designs were available and could have been used does not mean that they would have been used. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). We agree with Patent Owner that there is no evidence that that Fukaya was in need of any improvements to its compactness, aberrations, or chief ray angle. Prelim. Resp. 27. As Patent Owner establishes, the original Fukaya track length is actually shorter than the track length of the redesigned lens systems proposed by Petitioner, aberrations are properly corrected in the unmodified Fukaya lens system, and Petitioner’s redesign provides only minimally improved off-axis relative illumination. Id. at 27–33.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “ordinary skill, as of the August 2014 priority date of the ’845 patent, would have been motivated to modify the Fukaya seven-lens system to change the bi-convex/bi-concave design of the sixth and seventh lenses to a double gullwing/meniscus design. Redesigning a lens system is extraordinarily complicated, requiring protracted trial-and-error experimentation with nearly an infinite number of possible solutions in a highly multidimensional space. Ex. 1010, 11; Ex. 1011, 169. We conclude that Petitioner and its expert navigate along one path out of many to the particular redesign they propose using improper result-oriented hindsight as a guide. Petitioner’s expert’s recitation of the at least 25 steps taken to journey from the original Fukaya design to the modified design is instructive: (i) inputting into lens design software the original Fukaya lens parameters; (ii) evaluating its off-axis performance; (iii) increasing the number of analysis field points; (iv) deciding to focus on lenses 5–7, which requires that all aspherics be varied; (v) modifying lens 6 aspherics; (vi) adding CARD operands in the merit function to change the curvature radius values on the lens surfaces; (vii) adding FTGT operands to control spacing between the lenses and lens thicknesses; (viii) adjusting CENY to set the field height; (ix) using a 20x20 rectangular grid of rays for the spot rms part of the merit function; (x) making all aspherics and conics variable, except on the objectside surface of the seventh lens; (xi) increasing the f-number to 2; (xii) increasing sampling to 40x40; (xiii) targeting a positive curvature on the image-side surface of lens 6 with the CVGT 0 operand; (xiv) increasing FTGT to 0.2 on lens 7; (xv) increasing the focal length of lens 6 to 3mm; (xvi) targeting a positive curvature on the object side of lens 7 with the CVGT 0 operand; (xvii) reducing the power of lens 7; (xviii) increasing the target focal length on lens 6; (xix) releasing the focal length constraint on lens 7; (xx) releasing the focal length constraints on lenses 5 and 6; (xxi) reducing f-number in steps to 1.65; (xxii) adding DIMX operands; (xxiii) freezing the conics on surfaces 10 and 14; (xxiv) adding FCGT and FCGS commands to limit field curvature; (xxv) adding LONAs into the merit function — thus “resulting” in the Fukaya lens system with a meniscus-gullwing lens pair for lenses 6 and 7.5 Ex. 1001 ¶¶ 82–85. We are not persuaded that this exercise is sufficiently free of hindsight motivation. For purposes of this Decision, we accept that gullwing/meniscus designs were well-known as of the priority date.6 However, the fact that such designs were available and could have been used does not mean that they would have been used. Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). We agree with Patent Owner that there is no evidence that that Fukaya was in need of any improvements to its compactness, aberrations, or chief ray angle. Prelim. Resp. 27. As Patent Owner establishes, the original Fukaya track length is actually shorter than the track length of the redesigned lens systems proposed by Petitioner, aberrations are properly corrected in the unmodified Fukaya lens system, and Petitioner’s redesign provides only minimally improved off-axis relative illumination. Id. at 27–33.” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 9,366,845

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.