- PTAB · Mar 7, 2025 · IPR2024-01176 · APJ Jason M Repko · IPR · Institution
Instituted IPR of claims 1–23 on all petition grounds; the Board found a reasonable likelihood of success on at least one claim based on MPEG-1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the ’148 Patent would have had a (1) Bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a comparable field of study such as Physics, and (2) approximately 2-3 years of practical experience with video and/or image processing or coding. More education could substitute for experience, and vice versa. Pet. 5–6 (citing Ex. 1003 ¶¶ 23–24). Patent Owner applied Petitioner’s definition in the Preliminary Response. Prelim. Resp. 16 (Pet. 5–6). At this stage, we adopt Petitioner’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’148 patent and the asserted prior art and (2) it is supported by the testimony of Dr. Eli Saber.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“For purpose of institution, we preliminarily determine that claim 1 requires a sequence-level parameter. The claims themselves provide “substantial guidance” regarding the meaning of claim language. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, claim 1 recites that the level is for encoding a “sequence.” Ex. 1001, 25:56–60. Claim 1 expressly recites that “the digital video sequence compris[es] a number of frames.” Id. at 25:43–44. In this way, claim 1 defines a sequence to exclude a single picture. This reading is consistent with the specification’s focus on a sequence-level solution. According to the ’148 patent, “The present invention improves prior art solutions for indicating QP related information by introducing a sequence level QP” (SQP). Id. at 11:25–27 (emphasis added). Indeed, Petitioner acknowledges that the SQP is the purported improvement. See Pet. 5. Patent Owner agrees. See, e.g., Prelim. Resp. 8–9, 25–26. Claims are not normally interpreted “in a way that excludes embodiments disclosed in the specification.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). A trial could produce additional evidence that may support a determination in the Final Written Decision that defining a picture-by-picture quantization level is somehow “for use in encoding of the digital video sequence.” But, at this stage, the parties have given us little reason to adopt such a construction. There is no dispute that H.263 signals PQUANT at the Picture layer. Pet. 51; Prelim. Resp. 25. Indeed, the basis for Petitioner’s challenge is that PQUANT defines the quantizer for a picture and is updated for GOBs or macroblocks within the picture. Pet. 53. We disagree with the interpretation used in Petitioner’s challenge: a picture-layer quantization parameter falls within the scope of the claim. Id. at 51. Rather, for the reasons discussed above, we preliminarily determine that the claims require a sequence-level parameter. And Petitioner has not sufficiently explained why PQUANT is a sequence-level parameter. Thus, we cannot conclude that Petitioner has shown a reasonable likelihood of prevailing in its challenge to claim 1 with respect to H.263. See id.; Prelim. Resp. 25.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,175,148 - PTAB · Mar 4, 2025 · IPR2024-01181 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Rao and Scahill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“accessible to each of the plurality of executable applications, the API callable by each of the executable applications to request an execution time according to the corresponding network access policy controls for that application.” Ex. 1001, 107:41–45. Petitioner argues that Scahill teaches that limitation and that a person having ordinary skill in the art would have combined the teachings of Rao and Scahill with a reasonable expectation of success. Pet. 13–19, 24–27; see also Ex. 1003 ¶¶ 60–72, 81–85. After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that Scahill teaches that limitation and that a person having ordinary skill in the art would have combined the Rao and Scahill with a reasonable expectation of success. Our specific preliminary findings are set forth below.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have (1) held at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) had three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 3 (citing Ex. 1003 ¶¶ 24–26). Petitioner further argues that “[m]ore related education would compensate for fewer years of work experience (and vice versa).” Id. (citing Ex. 1003 ¶¶ 24–26). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is not disputed and consistent with the invention claimed in the ’700 patent.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms need to be expressly construed.” Pet. 4. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,749,700 - PTAB · Mar 4, 2025 · IPR2024-01180 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were unpatentable, chiefly because Rao did not teach blocking network access.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have (1) held at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) had three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 4 (citing Ex. 1003 ¶¶ 24–26). Petitioner further argues that “[m]ore related education would compensate for fewer years of work experience (and vice versa).” Id. (citing Ex. 1003 at ¶¶ 24–26). Patent Owner “does not challenge the Petition’s proposed definition.” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is not disputed and consistent with the invention claimed in the ’076 patent.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that the term “disallow[]” should be given the same construction the parties agreed upon during the district court proceeding. Prelim. Resp. 9. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Petitioner does not sufficiently explain where Rao teaches “allow[ing] or disallow[ing]” as recited in claim 1. See Pet. 13–18, 25–30. To the extent Petitioner and Dr. Bims cite to Rao, they reference paragraphs 191 through 193, which discuss how Rao’s filter 322 is used to implement prioritization. See Pet. 15; Ex. 1003 ¶ 65. More specifically, those paragraphs recite using prioritization to place the network packets in different queues based on their priority. See Ex. 1005 ¶¶ 191–193. We see nothing in Rao that teaches or suggest that the network packets would be disallowed, as opposed to simply delayed, based on priority. Id. And, as Patent Owner argues, this finding is consistent with factual findings made by a different panel considering the teachings of Rao in an inter partes review of a related patent. See Prelim. Resp. 16–18 (citing Samsung Elecs. Co v. Headwater Research LLC, IPR2023-01361, Paper 8 (PTAB Mar. 29, 2024) (Decision Denying Institution)). Even if one reads the Petition as arguing that a person having ordinary skill would have modified Rao to include Araujo’s blocking—which we do not—we would not be sufficiently persuaded by that argument. Although Petitioner explains why a person having ordinary skill in the art would want to consider power usage along with whether the application is in the foreground or background, Petitioner does not explain why a person having ordinary skill in the art would have changed prioritization to blocking. See Pet. 13–18. Indeed, such a modification appears to be one that would render Rao “inoperable for its intended purpose.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,198,076 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25
Patent outcomesUS 9,008,483 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,008,483 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Almondnet, Inc. And Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2024-00666 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the asserted combinations did not establish the required determination that access occurred during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting 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 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. Patent Owner has not challenged the status of Baig as prior art. See PO Resp. Based on our review of the complete record, we find that Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Almondnet, Inc. And Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2024-00701 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the prior-art combinations did not establish a determination that devices accessed the Internet during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting 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 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. Patent Owner has not challenged the status of Baig as prior art. See PO Resp. Based on our review of the complete record, we find that Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition. Q So is it your opinion that the – the limitation 1B requires that the system determines whether or not the accesses by the -- the two electronic devices occurred within a predetermined period of time? A Yes.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01281 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the cited combinations did not establish a determination that devices accessed the Internet during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we consider the level of ordinary skill in the pertinent art at critical time. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966). The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 3 U.S. Pat. Pub. 2008/0113674 A1, published May 15, 2008 (Ex. 1003, “Baig”). 4 U.S. Pat. Pub. 2004/0128547 A1, published July 1, 2004 (Ex. 1006, “Laidlaw”). 5 U.S. Pat. No. 6,427,170 B1, issued July 30, 2002 (Ex. 1007, “Sitaraman”). 6 Harley Hahn, The Internet Complete Reference (2d ed. 1996) (Ex. 1008, “Hahn”). 7 U.S. Pat. No. 7,730,030 B1, issued June 1, 2010 (Ex. 1009, “Xu”). 8 U.S. Pat. Pub. 2006/0282328 A1, published Dec. 14, 2006 (Ex. 1010, “Gerace”). 1573, 1579 (Fed. Cir. 1995). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (2023). 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, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting 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 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner’s arguments. First, we agree with Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - Howard Industries, Inc. v. Capsa Solutions LLCAll claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Final written decision
Claims 3 and 4 are unpatentable: claim 3 as obvious over Clark, Manner, and Santoro; claim 4 as obvious over Clark and Manner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have at least a four-year college degree in mechanical engineering, biomedical engineering, industrial design, or a closely related field and at least one year of experience in product development and design for commercial workstations and work platforms.” Pet. 7 (citing Ex. 1004 ¶¶ 17–18). Petitioner further contends that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a pertinent discipline involving mechanical product design, such as mechanical engineering, with 2-3 years experience in in [sic] the design, manufacture, or analysis of mechanical devices.” PO Resp. 18. Patent Owner alternatively argues that a person of ordinary skill in the art “with a 2-year mechanical engineering diploma and . . . 4-6 years of experience in in [sic] the design, manufacture, or analysis of mechanical components and devices.” Id. Patent Owner contends that “Petitioner submits a somewhat different, and broader, definition” of a person of ordinary skill in the art than Patent Owner’s definition because Petitioner’s definition includes industrial design which is a field that does not require the same level of hard sciences as Patent Owner’s definition. Id. Patent Owner further contends that “the Petition should be denied under either party’s definition of a [person of ordinary skill in the art] as Petitioner has failed to meet its burden of establishing a prima facie case of obviousness.” Id. at 18–19 (citing Ex. 2012 ¶¶ 45–47). We apply Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“We have considered the parties’ respective arguments concerning the construction of this claim term and, for the following reasons, we adopt Patent Owner’s construction of “compartment” as “an enclosed space for containing an item.” First, Petitioner does not dispute that it agreed to adopt Patent Owner’s construction in the district court proceeding between the parties. Pet. Reply 5; Tr. 8:14–21. Second, Petitioner cites to several Board Decisions in which the panels construed claim terms even though the parties agreed to constructions in parallel litigation and argues that the agreement between Petitioner and Patent Owner in the parallel district court proceeding has no bearing on this proceeding. Id. (citing Cook Grp. Inc. v. Cook Med. LLC, IPR2017-00135, Paper 7 at 7–8 (PTAB May 16, 2017); Arris Int’l PLC v. Sony Corp., IPR2016-00834, Paper 54 at 26–29 (PTAB Sept. 28, 2017); Apple Inc. v. VirnetX Inc., IPR2015-00810, Paper 44 at 18–19 (PTAB Aug. 30, 2016)). But, those cited decisions are not precedential and two of them were decided under the “broadest reasonable interpretation standard,” not the Phillips standard, thereby rendering a stipulation between the parties in district court less informative to the panels’ determinations. See Apple, IPR2015-00810, Paper 44 at 18; Cook Grp., IPR2017-00135, Paper 7 at 7. More importantly, given Petitioner’s agreement with Patent Owner’s construction in the district court, we see no reason to apply a different construction here simply because Petitioner proposed that construction prior to agreeing to the construction with Patent Owner in district court. Tr. 11:21–25.8” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that claims “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365. First, “when a patentee sets out a definition and acts as his own lexicographer” or second, “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp., 90 F.3d at 1580). In order for the patentee to act as his or her own lexicographer, the patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning . . . [i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to define the term. Id. Further, in order to establish disavowal of claim scope, the specification must “make[] clear that the invention does not include a particular feature . . . even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. As noted above, the underlying premise of Patent Owner’s proposed construction is that the language “disposed in” is broad enough to encompass compartments not “entirely in” or “contained in” the recited portion of the work platform.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“For the following reasons, we determine that the portions of the prosecution history of the ’650 patent relied on by Patent Owner do not “prov[e] the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled in the art.” Trivascular, 812 F.3d at 1063– 64.14 Patent Owner argues that the prosecution history redefined the term forward “by disclaiming workstations that are mounted on top of or over the height adjustment mechanism.” PO Resp. 29. Claims 3 and 4 recite “a work platform including a work surface and compartments for containing items” not a “workstation.” It is unclear what Patent Owner is referring to as the “workstation,” i.e., the recited “work platform,” the recited “work surface,” or the combination of “work platform,” “work surface,” and the recited “compartments.” Patent Owner injects further ambiguity by rephrasing the disclaimer, as “Applicant explicitly disclaimed carts having work stations mounted entirely to the top of the height adjustment mechanism (e.g., carts like Clark and Reeder).” Id. at 30 (emphasis added). Regardless of these 14 Because of our determination that the requirements for a clear and unmistakable disclaimer are not met by the cited portions of the prosecution history of the ’650 patent, we need not and do not reach the question of relevance of the statements in the prosecution of the ’650 patent to the claims of the ’668 patent. ambiguities, Patent Owner misinterprets the statements in the prosecution history. The applicant’s primary argument was that an ordinarily skilled artisan would not have incorporated moveable work surfaces above the “compartment” of Clark. Ex. 1033, 137–38. The applicant’s arguments, thus, do not support Patent Owner’s argument here that “workstations” should not be mounted “over or on top of the height adjustment mechanism.” See id.” slip op. at 32
Patent outcomesUS 7,594,668 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,594,668 - Howard Industries, Inc. v. Capsa Solutions LLCAll claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01275 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–3, 5, 6, and 8 are unpatentable as obvious over Clark and Manner (claims 1–3, 5, 8) and Clark, Manner, and Hartman (claim 6).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have at least a four-year college degree in mechanical engineering, biomedical engineering, industrial design, or a closely related field and at least one year of experience in product development and design for commercial workstations and work platforms.” Pet. 8 (citing Ex. 1003 ¶¶ 17–18). Petitioner further contends that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a pertinent discipline involving mechanical product design, such as mechanical engineering, with 2-3 years experience in in [sic] the design, manufacture, or analysis of mechanical devices.” PO Resp. 17–18. Patent Owner alternatively argues that a person of ordinary skill in the art “with a 2-year mechanical engineering diploma and . . . 4-6 years of experience in in [sic] the design, manufacture, or analysis of mechanical components and devices.” Id. at 18. Patent Owner contends that “Petitioner submits a somewhat different, and broader, definition” of a person of ordinary skill in the art than Patent Owner’s definition because Petitioner’s definition includes industrial design which is a field that does not require the same level of hard sciences as Patent Owner’s definition. Id. Patent Owner further contends that “the Petition should be denied under either party’s definition of a [person of ordinary skill in the art] as Petitioner has failed to meet its burden of establishing a prima facie case of obviousness.” Id. at 18–19 (citing Ex. 2012 ¶¶ 45–47). We apply Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“i. “actuator” Petitioner contends in district court that the term “an actuator for controlling the driver” is indefinite for invoking means-plus-function claim language without providing corresponding structure. Pet. 9 (citing Ex. 1023, 36–40; Ex. 1024, 28–32). For the purposes of this proceeding, Petitioner adopts the construction Patent Owner presented in the district court, i.e., “a mechanism to activate or control equipment, e.g., by use of pneumatic, hydraulic, or electronic signals.” Id. at 10 (quoting Ex. 1012, 3–4). Patent Owner does not address this term in this proceeding. See generally PO Resp.; Sur-reply. Because it is uncontested in this proceeding, we apply Patent Owner’s construction from the district court proceeding as presented here by Petitioner.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“Although not dispositive to our Decision, we apply the plain and ordinary meaning of this term, which does not require the work surface to be curved.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that claims “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365. First, “when a patentee sets out a definition and acts as his own lexicographer” or second, “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp., 90 F.3d at 1580). In order for the patentee to act of his or her own lexicographer, the patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning . . . [i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to define the term. Id. Further, in order to establish disavowal of claim scope, the specification must “make[] clear that the invention does not include a particular feature . . . even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. As noted above, the underlying premise of Patent Owner’s proposed construction is that the language “disposed in” is broad enough to encompass compartments not “entirely in” or “contained in” the recited portion of the work platform. We start our analysis with the claim language. Claim 1 recites “wherein the work platform includes a portion projecting, relative to the height adjustment mechanism, in a forward direction . . . the compartment is disposed in the portion of the work platform projecting in the forward direction.” Ex. 1001, 14:39–43. By reciting “a portion projecting, relative to the height adjustment mechanism,” the claim language implies that the entire work platform is not required to project in the forward direction. We also note that nothing in claim 1 requires any particular size of the compartment. The only recitation in the claim regarding location of the compartment is that it “is disposed in the portion of the work platform projecting in the forward direction,” but that language on its face does not require or suggest that the compartments are “entirely in” or only “contained in” the recited portion of the work platform. In other words, nothing in the claims expressly restricts the compartments from being disposed in the “portion” recited as well as another portion of the work platform that does not project in the forward direction. Turning to the Specification, Patent Owner does not direct us to any” slip op. at 18
Patent outcomesUS 8,215,650 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,215,650 - PTAB · Feb 12, 2025 · IPR2024-01139 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–7, 9, and 14–51 on all petition grounds, finding a reasonable likelihood that the TML6–Fandrianto combination renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“presented art includes art listed on an Information Disclosure Statement (IDS) and “art made of record by the Examiner.” Id. at 7–8. Here, the Petition’s challenges are based on TML6 and Fandrianto. Pet. 2. TML6 is substantially the same as art previously presented to the Office because the ’469 patent discusses TML6. See, e.g., Ex. 1001, 8:43–53, 11:33–13:29. Fandrianto was made of record by the Examiner. Ex. 1002, 310; Ex. 1001, code (56). Thus, the first part of the framework is satisfied, and we must proceed to the second part.” slip op. at 13
- Skill levelOther
“We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 26. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,950,469
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.