- ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 12, 2025 · IPR2024-01055 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we do not institute an inter partes review because the information presented in the Petition, in view of the Preliminary Response, does not show that Petitioner is reasonably likely to prevail with respect to at least 1 of the claims challenged.” slip op. at 2
- Skill levelSkill level board ownOther
“We agree with Patent Owner that a person can qualify as a skilled artisan based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ‘622 patent. We disagree, however, that industry experience with ACR systems is required to qualify as a skilled artisan. The ‘622 patent describes a media usage monitoring and measurement method that relies on “known content recognition methods,” including known ACR. Ex. 1001, code (54), 5:38–44, 5:59–6:13. The claimed invention relates to analyzing sample sequence data to enhance content identification and to establish channel identification. Id. at code (57), 14:37–51 (claim 1). The ‘622 patent relies upon known ACR systems, but does not claim a new method of content recognition such that industry experience designing or implementing ACR systems is required. We accept that such experience may assist in providing relevant industry experience. For these reasons, we determine that a skilled artisan would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a skilled artisan based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 135–142. The reason Petitioner’s reliance on paragraph 72 of Wang777 is unavailing is because we are not persuaded that it discloses or suggests using two different content identifiers to identify a channel. When viewing the cited portions of that paragraph in the proper context of what Wang777 teaches as a whole (as we are required to do), we are not persuaded a skilled artisan would understand that the disclosed additional and different content identifiers in the alleged play stream are being used to identify a channel.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “none of the claim terms require explicit constructions” and “all claim terms have been given their plain and ordinary meaning, in the context of the ’622 patent specification, under the Phillips standard.” Pet. 20. Patent Owner does not dispute this contention (see generally Prelim. Resp.) and its declarant, Mr. Hoarty, states that he “applied the plain and ordinary meaning of all claim terms at issue” (Ex. 2001 ¶ 52). 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)). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’622 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,756,622 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 10, 2025 · IPR2024-01054 · APJ Michael T Cygan · IPR · Institution
Institution denied for claims 1–15 because Petitioner did not show Seet was prior art, defeating the reasonable-likelihood showing for every asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any one of claims 1–15 of the ’768 patent. Accordingly, we do not institute an inter partes review of the ’768 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We agree with Patent Owner that Petitioner has not met its burden to show that Seet is prior art. Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional. See Dynamic Drinkware, 800 F.3d at 1381–82. As the “‘hallmark’ of written description, . . . the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted).” slip op. at 12
- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’768 patent and the prior art of record.” slip op. at 7
Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,510,768 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 10, 2025 · IPR2024-01057 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood of proving claims 1–15 unpatentable; Seet was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Without the benefit of its provisional filing date, Seet, filed on February 17, 2005, is not prior art to the ’848 patent, having an uncontested benefit to the May 27, 2004 filing date of its provisional. Because each of Petitioner has not shown a reasonable likelihood of prevailing on any of its unpatentability assertions. III. CONCLUSION For the reasons discussed above, we conclude Petitioner has not shown a reasonable likelihood of prevailing with respect to any of claims 1–15. We determine that the record does not support institution. Accordingly, no inter partes review is instituted.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media. The disclosure of the Seet provisional, however, is more limited and defines the term media exclusively as audio. Ex. 1019, 4 (“Media will be defined as any streaming audio source in any form, be it radio, television, cable, satellite, internet stream, or the like.”). This definition does not include the full scope of “media” as that term is used in claim 9 of Seet because it does not include video, software, and pictures.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–8. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’848 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Here, neither party sets forth any explicit claim construction. Pet. 14; Prelim. Resp. Although Patent Owner analyzes the term “media monitoring device” in its arguments (Preliminary Response 37–43), our ultimate determination on institution does not turn on that construction. We determine that no need exists to determine a particular construction for purposes of this institution decision, and instead construe the claims pursuant to § 42.100(b).” slip op. at 8
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 10,719,848 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 5, 2025 · IPR2024-01056 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–11 were unpatentable over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“We agree with Patent Owner that a person can qualify as a POSA based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’896 Patent. We disagree, however, that industry experience with ACR systems is required to qualify as a POSA. The ’896 Patent describes a media usage monitoring and measurement method that relies on “known content recognition methods.” Ex. 1001, code (54), 5:48–52. The claimed invention using certain data, including content identification results. Id. at code (57), 15:12–35. The ’896 Patent does not claim a new method of content recognition. For these reasons, we determine that a POSA would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a POSA based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claims and Specification are consistent with defining “offset” as relative, rather than absolute. Claim elements 1.4 and 9.5 each recite: “a content offset indicating a time position of a content identification result within identified content.” Ex. 1001, 15:24–26, 16:25–27 (emphasis added). In our view, “a time position . . . within identified content” means the time position is relative to a reference point within the identified content. Our understanding of the claim language is reinforced by the Specification. According to the ’896 Patent, content offset data are shown in Figure 5, but not Figure 4. Ex. 1001, 9:22–26. Figures 4 and 5 both show a series of log times and corresponding content IDs, where the log time indicates when a sample began to be captured. Id. at 9:29–32, 9:40–45, 11:32–35, Figs. 4, 5. Figure 5 additionally includes a “content offset” column, as illustrated below. Id. at Fig. 5 (excerpt). According to the ’896 Patent, Each content offset value represents a time offset from the beginning of a particular piece of content. For example, row 8 of Play Stream 510 corresponds to a sample whose beginning is located 9 time units from the beginning of TV program 27, thus the content offset is referenced as (0)+9. Id. at 11:41–46. Although both the log time and content offset are expressed in relative terms in the Figure 5 example, only the content offset is relative to a reference point within the identified content, in this case the beginning of the content. Id. at 9:40–45, 11:41–46.” slip op. at 12
- Expert testimonyOther
“We have considered Dr. Russ’s testimony pertaining to claim elements 1.1 and 9.1 and Feininger. Ex. 1003 ¶¶ 136–142, 179. Dr. Russ testifies that Feininger’s “[p]resentation time retriever 56 . . . retrieves a ‘program identifier [(content identification results)] from the packet header of the section of the recorded program currently being played back and store[s] that identifier in one or more program identification fields 68.’” Ex. 1003 ¶ 137 (citing Ex. 1005, 5:28–42). Like Petitioner, Dr. Russ does not take into account the description of “content identification” provided earlier in his testimony. Ex. 1003 ¶ 41 (citing Ex. 1001, 5:48–66). Dr. Russ does not assert that Feininger discloses content identification. Without content identification, there can be no content identification results. Dr. Russ further testifies that Feininger’s apparatus 50 “generates the ‘play stream of content identification results’ based on the data samples submitted to data logging device 26.” Ex. 1003 ¶ 139 (citing Ex. 1005, 4:4–13). Missing from this testimony is any opinion about whether Feininger’s apparatus 50 or data logging device 26 performs content identification. Dr. Russ does not point to any teaching or suggestion in Feininger that extracted program identifiers 68 result from content identification.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,572,896 - ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Feb 5, 2025 · IPR2024-01053 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Roku did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“We agree with Patent Owner that a person can qualify as a POSA based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’791 Patent. We disagree, however, that industry experience with ACR systems is required to qualify as a POSA. The ’791 Patent describes a media usage monitoring and measurement method that relies on “known content recognition methods.” Ex. 1001, code (54), 5:38–42. The claimed invention using certain data, including content identification results. Id. at code (57), 14:38–59 (claim 1). The ’791 Patent does not claim a new method of content recognition. For these reasons, we determine that a POSA would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a POSA based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 9
- Expert testimonyOther
“We have considered Dr. Russ’s testimony pertaining to claim elements 1.1 and 9.1 and Feininger. Ex. 1003 ¶¶ 135–141, 170. Dr. Russ testifies that Feininger’s “[p]resentation time retriever 56 . . . retrieves a ‘program identifier [(content identification results)] from the packet header of the section of the recorded program currently being played back and store[s] that identifier in one or more program identification fields 68.’” Ex. 1003 ¶ 137 (citing Ex. 1005, 5:28–42). Like Petitioner, Dr. Russ does not take into account the description of “content identification” provided earlier in his testimony. Ex. 1003 ¶ 41 (citing Ex. 1001, 5:38–55). Dr. Russ does not assert that Feininger discloses content identification. Without content identification, there can be no content identification results. Dr. Russ further testifies that Feininger’s apparatus 50 “generates the ‘play stream of content identification results’ based on the data samples submitted to data logging device 26.” Ex. 1003 ¶ 139 (citing Ex. 1005, 4:4–13). Missing from this testimony is any opinion about whether Feininger’s apparatus 50 or data logging device 26 performs content identification. Dr. Russ does not point to any teaching or suggestion in Feininger that extracted program identifiers 68 result from content identification.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The claims and Specification are consistent with defining “offset” as relative, rather than absolute. Claim elements 1.4 and 9.5 each recite: “a content offset indicating a time position of a content identification result within identified content.” Ex. 1001, 14:51–53, 16:7–9 (emphasis added). In our view, “a time position . . . within identified content” means the time position is relative to a reference point within the identified content. Our understanding of the claim language is reinforced by the Specification. According to the ’791 Patent, content offset data are shown in Figure 5, but not Figure 4. Ex. 1001, 9:22–26. Figures 4 and 5 both show a series of log times and corresponding content IDs, where the log time indicates when a sample began to be captured. Id. at 9:16–19, 9:27–31, 11:10–22, Figs. 4, 5. Figure 5 additionally includes a “content offset” column, as illustrated below. Id. at Fig. 5 (excerpt). According to the ’791 Patent, Each content offset value represents a time offset from the beginning of a particular piece of content. For example, row 8 of Play Stream 510 corresponds to a sample whose beginning is located 9 time units from the beginning of TV program 27, thus the content offset is referenced as (0)+9. Id. at 11:22–26. Although both the log time and content offset are expressed in relative terms in the Figure 5 example, only the content offset is relative to a reference point within the identified content, in this case the beginning of the content. Id. at 9:27–31, 11:22–26.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,296,791 - PTAB · Dec 16, 2024 · IPR2024-00891 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 23–46 on all grounds, finding a reasonable likelihood that Shin anticipates at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“Under the circumstances presented here, we find that discretionary denial is not warranted for the Petition in this case due to the parallel petition in IPR2024-00890. Given the large number of claims asserted by Patent Owner against Petitioner in the district court litigation, we do not consider two petitions asserting two single-reference grounds against forty claims including five independent claims to be excessive. The CTPG provides that assertion of a large number of claims in litigation is one circumstance under which more than one petition may be necessary. CTPG at 59. Furthermore, the two petitions challenge different claims of the ’031 patent. Claim length and subject matter complexity also justify the additional briefing presented by two petitions for which Patent Owner has been afforded the same amount” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(see 37 C.F.R. § 42.4(a)) that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims on the merits, so we grant institution of the petitioned inter partes review. See 35 U.S.C. § 314(a). We decline to exercise our discretion to deny institution because of the parallel petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSA”) as of the asserted priority date would have had a bachelor’s degree in biomedical engineering, chemical engineering, chemistry, or a related or equivalent field, and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience. Such experience could include either formal coursework in signal processing, computer science, or electrical engineering, or it could also be obtained during on-the-job experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. A POSA may have been part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians. The prior art also evidences the level of skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since Petitioner does not propose any alternative construction for “drift profile” or construction of any other term in this proceeding, there is no dispute over claim terms that we need to decide to resolve. Accordingly, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). We note in passing, however, that Patent Owner’s stated definition of “drift profile” in its Preliminary Response seems to comport both with Petitioner’s proposal in the district court litigation4 as well as how the ’031 patent’s specification uses the terms “drift” and “profile” in the context of “sensitivity.” See Ex. 1001, 21:36–48 (discussing “drift”), 210:39–60 (discussing “profile”).” slip op. at 15
Claim construction§ 102 anticipationDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 16, 2024 · IPR2024-00890 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR for claims 1–2, 4, 6–15, and 20–22 because the petition showed a reasonable likelihood of prevailing on anticipation by Shin.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“In IPR2024-00891, Petitioner filed on the same date a parallel petition to challenge claims 23–26 of the ’031 patent on grounds similar to those asserted in this proceeding. In its “Explanation of Parallel Petitions” (Paper 3), Petitioner provides the following table to explain the claims challenged and grounds of unpatentability asserted in each petition: Paper 3, 2. Petitioner ranked the Petition filed in this proceeding as first. Id. at 3. Accordingly, we need not reach the issue of parallel petitions in this proceeding, and instead address the issue in our institution decision in IPR2024-00891.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood that each limitation of claim 1 is disclosed by Shin notwithstanding Patent Owner’s arguments. Accordingly, Petitioner has shown a reasonable likelihood to prevail in demonstrating unpatentability of claim 1 of the ’031 patent as anticipated by Shin.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art “because the Petition fails to demonstrate unpatentability even under that definition.” Prelim. Resp. 18. Petitioner’s proposed level of skill in the art is consistent with the ’031 patent and the asserted prior art except that we set the level to “at least two . . . years of experience.” Otherwise, on this record, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not present any dispute over the meaning of any claim term, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 11, 2024 · IPR2024-00906 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1, 4–6, and 8–27 on all five § 103 grounds, finding a reasonable likelihood that claim 1 is obvious over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Based on the current record, the weight of the evidence before us does not support a finding that that the same or substantially the same art or arguments were previously presented to the Office.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 under 35 U.S.C. § 103 as obvious over the combined teachings of N93, Dua, and Herle.” slip op. at 68
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’241 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,445,241 - PTAB · Dec 11, 2024 · IPR2024-00907 · APJ Frederick C Laney · IPR · Institution
The Board instituted inter partes review on all challenged claims and all five §103 grounds, finding a reasonable likelihood that claim 1 is unpatentable over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(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, after review of [Becton Dickinson] 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“having “a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of wireless communications,” wherein “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1002 ¶ 28). Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 19. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’590 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,129,590 - PTAB · Nov 20, 2024 · IPR2024-00859 · APJ James A Tartal · IPR · Institution
The Board instituted review of claims 1–9, 13–19, and 28–30 on all petition grounds after finding a reasonable likelihood that Pace anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In evaluating the exercise of discretion to deny institution under Section 325(d), we use the following two-part previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7–8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“C. Legal Standards for Anticipation and Obviousness A patent claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art is “cursory,” “unsubstantiated,” and “so vague as to be effectively meaningless.” Prelim. Resp. 26. According to Patent Owner, the Petition cites no evidence to substantiate the level of skill in the art, and Dr. Riviere’s declaration parrots the language in the Petition. Id. Although Patent Owner disputes the sufficiency of Petitioner’s definition of a person of ordinary skill in the art, Patent Owner does not propose a level of ordinary skill in the art of its own. See generally Prelim. Resp. Moreover, Patent Owner fails to present evidence that shows the level of ordinary skill in the art is different from Petitioner’s proposal, or that Petitioner’s proposal is in any way inconsistent with the level of skill reflected in the ’625 patent and the asserted references.8 We find that the ’625 patent and the cited prior art references reflect” slip op. at 30
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,510,625
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.