• Tableau Software, LLC v. Icharts LLCInstitution denied
  PTAB · May 14, 2025 · IPR2024-01388 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–18 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 explained below, we do not institute an inter partes review of the ’595 patent.” slip op. at 2

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

    “We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill” slip op. at 6

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

    “We agree with Patent Owner. At most, Jou teaches that it was known to interact with charts in a Windows environment or a browser window. Ex. 1007 ¶ 34. But Rostoker already teaches that a user could interact with a chart, via a graphical user interface in a web browser, while configuring the chart. Ex. 1005 ¶¶ 67–75. Petitioner does not explain persuasively why a skilled artisan, per the teachings of Jou, would have made Rostoker’s published charts interactive. Mr. Schmandt’s testimony that a skilled artisan “would have been motivated to incorporate Jou’s additional ‘interactive’ features into Rostoker’s system to enable users to better visualize and explore business data,” is not supported by his citations to Jou, at least as to whether a skilled artisan would have modified Rostoker’s published charts. Ex. 1003 ¶ 259 (citing Ex. 1007 ¶¶ 8, 9). Petitioner’s argument that Flash and Java could enable interactive features, at most, show that a skilled artisan could have implemented interactive features with Rostoker’s a reason why a skilled artisan would have made these modifications. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))). Thus, we are not persuaded that Petitioner is likely to show that a skilled artisan would have incorporated Jou’s interactive features into Rostoker to make Rostoker’s published charts interactive.” slip op. at 35

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “client is required for display and usage of an existing QlikView document (.qvw file). While the QlikView Server is responsible for opening, hosting, and calculating the document, the clients are required for user interaction and presenting the document and its objects.” Ex. 1009, 123. Petitioner points to no persuasive evidence that a Java or AJAX object or client executing at a web browser is a website separate from the server that serves the object or client. Mr. Schmandt makes conclusory statements to that effect, but does not state the basis for his testimony. Ex. 1003 ¶¶ 338–339. Thus, Mr. Schmandt’s testimony on this point is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and support, and is entitled to little weight.”).” slip op. at 44

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,712,595
• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9

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

    “Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11

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

    “A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26

  Patent outcomesUS 9,427,662 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over Hays; the Board also found claims 8 and 16 obvious over Hays and Choi.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). skilled artisan “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems,” but notes that a skilled artisan “may have additional education that might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” PO Resp. 2 (citing Ex. 2004 ¶ 28). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. PO Resp. 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” PO Resp. 3. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’056 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 5

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

    “The claim language itself suggests no such restrictions. Rather, all the claim language recites is video-game content that is for use in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it.” slip op. at 8

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

    “Hays discloses that an advertiser can target particular ads at particular times, such as “air[ing] the Domino’s ad campaign” after a “game has been played for 45 minutes.” Ex. 1005 ¶ 22. Thus, an advertiser selects ads to run, and those ads become part of the pool from which the advertising matching and weighting system selects ads. See Ex. 1005 ¶ 22 (“Based on information associated with each of the available ad units (e.g., current game environment, game title genre, predicted player demographic information for current available ad unit, player geography, time of day, etc.), the advertisement server may then (through matching and optimization) distribute and deliver targeted advertisements to players’ gaming devices, where the advertisements may be integrated into the relevant game areas in real time.” (emphasis added)). Thus, we agree with Petitioner that the ad targeting described in Hays’s paragraph 22 happens before the matching and weighting system determines which ads to serve. Pet. Reply 3–4 (referring to Hays’s paragraph 22 and arguing that the “pre-selection plainly happens serve to a particular mobile device”). In other words, ads are pre-selected before they are ultimately selected by the matching and weighting system. Petitioner’s contentions and Hays’s disclosures are consistent with the ’056 patent’s written description, which states the following: The pre-selected content may be stored on a storage medium accessible by the server. Updated content may be chosen from pre-selected content based on at least one of the factors including a type of the mobile communication device, a telecommunication service, a subscription associated with the mobile communication device, and a service provider of the telecommunication service. Ex. 1001, 11:34–40. Thus, the ’056 patent discloses that content is selected from pre-selected content. Claim 9 similarly requires identifying “what preselected in-game video game content to send,” meaning that content is selected from pre-selected content. See Tr. 31:2–5 (Patent Owner’s counsel’s argument that “there must be a pre-selection of certain content that will be available from which to select once the request is received, and then the checking step is performed in the various claims here”), 31:21–23 (Patent Owner’s counsel’s argument that “[t]here must be some pre-selection of, you know, kind of narrowed down content, if you will, but then when the request comes in, you choose among that pre-selected content for the final selection”). On this record, we find that Petitioner’s contentions and Hays’s disclosure of selecting ads to serve from a pool of ads that are selected ahead of time are consistent with the written description of the ’056 patent and show how Hays teaches the pertinent claim limitations.” slip op. at 22

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

    “argues that Hays “is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’056 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” PO Resp. 56–58. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–16 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays, which is a prior art printed publication.” slip op. at 17

  Patent outcomesUS 11,117,056 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,117,056
• PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00171 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–14 are unpatentable as obvious over Hays; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of Dr. Zagal, argues that a person having ordinary skill in the art “would have had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 62–66). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 62–66). Patent Owner, relying on the testimony of Dr. Akl, contends that a skilled artisan “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems,” but notes that a skilled artisan “may have additional education that might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” PO Resp. 2–3 (citing Ex. 2004 ¶ 28). According to Patent Owner, Petitioner’s proposal does not require Owner states, “[t]his difference does not materially affect the analysis presented below.” PO Resp. 3. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’958 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 5

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

    “requirements for the language “for use in a video game,” including that the updated video-game content be an interactive object that is inserted into an existing game, or at least a new ad unit not already present in the game, and that the updated content alter the function of the game. PO Resp. 15–17. Patent Owner offers no persuasive support for these restrictions on the claim language. The claim language itself suggests no such restrictions. Rather, the claim language simply recites video-game content that is for use in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it.” slip op. at 8

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

    “Owner’s position to be that mere storage of content is not enough to show pre-selection of that content. For example, during oral argument, Patent Owner’s counsel argued as follows: I don’t think it’s just as simple as saying, well, anytime you store anything, it’s been pre-selected, because again, that kind of reads out pre-selection, as well. And the same thing with indexing. I think that’s simply too broad. There must be some pre-selection of, you know, kind of narrowed down content, if you will, but then when the request comes in, you choose among that pre-selected content for the final selection. Tr. 31:18–23; see also PO Resp. 11 (“[E]xtending the claim to content that is merely selected from storage and sent gives no meaning to pre-selected . . . .”), 12 (“[C]ontent is not shown to be pre-selected by selecting it from storage and sending.”); Tr. 31:2–5 (Patent Owner’s counsel’s argument that “there must be a pre-selection of certain content that will be available from which to select once the request is received, and then the checking step is performed in the various claims here”), 34:23–24 (Patent Owner’s counsel’s argument that “[t]here still must be a pre-selection, which we don’t think is simply, you know, the act of storing”). As explained below in Sections II.D.2.b and II.D.6, Petitioner’s contentions based on Hays show that Hays teaches pre-selected ads, as recited in claims 1 and 8, and a pre-selected message, as recited in claims 5 and 12, according to Patent Owner’s understanding of the term. Therefore, we apply Patent Owner’s interpretation in our patentability analysis, and we need not provide a full claim interpretation, nor do we need to resolve whether pre-selecting can be met by merely storing data. See Realtime” slip op. at 14

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

    “unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “Hays is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’958 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” PO Resp. 48–50. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–14 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays, which is a prior art printed publication.” slip op. at 15

  Patent outcomesUS 10,617,958 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,617,958
• PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00132 · APJ David C Mckone · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Hays; claim 6 is also unpatentable over Hays and van Datta.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’202 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 9

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

    “The claim language itself suggests no such restrictions. Rather, the claim language simply recites video-game content that is usable in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it. As Petitioner points out (Reply 5), the specification directly refutes Patent Owner’s position. The ’202 patent’s Figure 2A (reproduced above) is instructive. In this example, “several items 210, 220, 225, 230, and 235 are shown within scene 200,” and virtually any of these items may be changed by receiving updated content on the mobile communication device. For instance, the shirt 230 might be updated to include a logo associated with third party X (as shown). The poster 225 might advertise an upcoming movie for third party Y, and chalk board 220 may contain a handwritten advertisement for third party Z (as shown). Ex. 1001, 6:42–50. When an advertising contract changes, “the mobile communication device may thereafter download updated content reflecting a new graphic, shirt, or entirely new object, to place at 230.” Id. at 6:55–57. These are examples of updated video-game content (updated advertisements on posters, T-shirts, and chalk boards) that are usable (e.g., by the game or mobile communication device executing the game) in a video game that already exists on the mobile communication device. These are also examples of what Patent Owner argues are “skins” that correspond to existing ad units and that do not alter any function of the game. Patent Owner’s construction, then, would exclude the ’202 patent’s preferred embodiment. “Such an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “[e]ach of Hays and Choi is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’202 Patent.” PO Resp. 56. Patent Owner argues that a prior art reference under pre-AIA 35 U.S.C. § 102(e) is a printed publication under Section 311(b) only as of its publication date and not as of its filing date. Id. at 56–58. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–9 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays or Hays and Choi, which are prior art printed publications.” slip op. at 16

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner and Dr. Akl misunderstand Hays. In the soft drink example, “the advertisement management service system may send bots or electronic agents into the game as advertising units or real characters in the game.” Ex. 1005 ¶ 79. Thus, the service system inserts more than a skin; it inserts a bot or agent that was not part of the game before its insertion. Because Dr. Akl’s testimony (Ex. 2004 ¶¶ 63–64, 72–73) is inconsistent with Hays’s disclosure, we do not credit it. See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (“[W]e must disregard the testimony of an expert that is plainly inconsistent with the record . . . .”).” slip op. at 27

  Patent outcomesUS 9,731,202 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,731,202
• Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.Instituted
  PTAB · Apr 8, 2025 · IPR2024-01437 · APJ Meredith C Petravick · IPR · Institution

  The Board instituted IPR on claims 1, 3, 9, 18, and 19 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Kaplan and Mardiks.

  RulingsInstitution decision

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

    “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.”” slip op. at 2

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

    “Petitioner contends that “[it] would have . . . been obvious to combine Kaplan with the teachings of Mardiks because it was a simple application of human interface device to achieve Kaplan’s method and system of transmission of audio/video data to a wireless network.” Pet. 22 (citing Ex. 1002 ¶ 87). Petitioner, additionally, contends that “the modification would achieve the predictable result to automatically launch a stored application on the peripheral device to launch Kaplan’s remote audio/visual data transmission to the wireless network.” Id. On this record, and absent any argument or evidence to the contrary, we determine that Petitioner’s evidence and analysis sufficiently shows that it would have been obvious to a POSITA to modify Kaplan so as to present its transmitter 120 to computer 220 as a human interface device, as taught by Mardiks, in order to automatically launch a stored application for transmitting audio/visual data to a wireless network. We, thus, determine that Petitioner’s evidence and analysis sufficiently shows that the combination of Kaplan and Mardiks discloses element 1b.” slip op. at 12

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

    “standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner proposes constructions for a number of claim terms. Pet. 9– 14. Only those terms in controversy, however, need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). For the purposes of determining whether to institute trial or not, we need not construe explicitly any claim term.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art would have had at least a Master’s Degree in Electrical Engineering and five years of work experience in computer science and embedded systems, or a Master’s Degree in Computer Science and five years of work experience in electrical and computer engineering and embedded systems. Additional educational experience could substitute for some of the work experience. Pet. 9 (citing Ex. 1002 ¶¶ 36–37). 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” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,403,237
• Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.Instituted
  PTAB · Apr 8, 2025 · IPR2024-01436 · APJ Meredith C Petravick · IPR · Institution

  The Board instituted IPR on claims 1–3, 9–11, 19, 21, and 22 based on both asserted obviousness grounds: Kaplan, Ahmed, and Deforche; and Maeda, Ahmed, and Deforche.

  RulingsInstitution decision

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

    “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 Reply, the 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 ’002 patent. Accordingly, we institute an inter partes review of claims 1–3, 9–11, 19, 21, and 22 of the ’002 patent on the grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art and does not propose an alternative level. 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 ’002 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)Term construed board ownDecided for patent owner

    “term “pre-installed generic driver. Pet. 13; Prelim. Resp. 7–8. Those proposed constructions are consistent with the lexicographic definition provided in the ’002 patent. In a section titled “Definitions,” the ’002 patent states: The term “pre-installed generic driver” is intended to mean a driver which is installed on a processing device such as a computer as a standard driver, e.g. is installed with the installation of the operating system. Such a driver is standard for the operating system and can drive a standard class of peripheral devices coupled to or connected to the processing device. Ex. 1001, 14:32–38. We apply this lexicographic definition in our analysis below.” slip op. at 9

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

    “On this record, we determine Petitioner’s rationale to combine to be sufficient. We note that at this stage of the proceeding Petitioner’s rationale to combine is supported by the testimony of Dr. Almeroth as to the knowledge of a POSITA. Patent Owner’s argument as to the knowledge of a POSTIA are unsupported. On this record, Petitioner sufficiently shows that Ahmed and Deforche teach that using separate audio and video drivers was “preferred” and “has the advantage that the need for a specific driver for the communication between the wireless modem device and the computer device can be avoided.” Pet. 26–28, 36–37 (citing Ex. 1014, 18:26–19:21; Ex. 1030 ¶ 9). “If 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.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,762,002
• Kinderfarms LLC v. Genexa Inc.All claims unpatentable
  PTAB · Mar 24, 2025 · PGR2023-00051 · APJ Deborah Katz · PGR · Final written decision

  Claims 1–24 are unpatentable as obvious under § 103 over FR458 with the ’4666 patent and WO133; claims 1–17 are also unpatentable over WO742 with the ’4666 patent and WO133.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ positions about the level of ordinary skill in the art are similar. (See Pet., 13–14; see PO Resp., 10–12.) In light of the parties’ arguments and evidence, we determine that the ordinarily skilled artisan would have had a bachelor of science degree in a relevant life sciences field, such as chemistry, biochemistry, or pharmacy, with at least three to four years of work or laboratory experience in pharmaceutical formulations and would have had access to team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals. (See Pet. 13–14; see PO Resp. 10–12; see Dec. 6–7.) Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’795 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 6

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

    “Although Petitioner puts forth constructions for terms in the claims of the ’795 patent, Patent Owner argues that we need not expressly construe any terms to resolve the controversy between the parties. (See Pet. 14–19; see PO Resp. 12.) Except as indicated below, we agree that express construction of the claim terms is not required because the parties do not materially dispute the meanings of the terms. 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))). Limitation (c) of claim 1 recites “syrup formulation” once and then “syrup” by itself twice. The parties agree that two recitations of “syrup” by itself mean and are synonymous with “syrup formulation.” (See Tr. 15:16– 19 (counsel for Petitioner: “[T]he term, syrup, by itself, means the formulation. And for that reason, we--it’s our position that it’s the syrup formulation that has the specific viscosity requirements as well as the other features that we discussed.”); 31:17–20 (counsel for Patent Owner: “But those wherein clauses, what it’s referring to, the syrup formulation and the syrup -- it was all to a complete to a final formulation, right, it’s not just the agave syrup. Everybody here recognizes and understands that from that perspective.”).) Thus, the parties agree that the “viscosity of less than 1500 centipoise at about 22 degrees” limits the final “pharmaceutical syrup formulation for oral administration,” not the “agave syrup” limitation in limitation (b) of claim 1.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner argues further that Dr. Crowley testifies that, “[g]enerally, suspensions having a viscosity in the range of 20 to 150 cP are considered readily pourable,” but that this range is well below the viscosity range of 200–900 cP taught in WO133 and the preferred viscosity range of 1000–3000 cP taught in the ’4666 patent. (See PO Resp. 45 (quoting Ex. 1003 ¶ 59).) Dr. Crowley testifies that “increasing the viscosity of a suspension formulation has been shown to impair the dissolution characteristics of immediate release acetaminophen” and that, “[w]ith respect to suspensions for oral administration, having a higher viscosity is generally not desirable.” (Ex. 1003 ¶ 59.) According to Patent Owner, this is a “teaching away” because Petitioner’s own expert testimony demonstrates a motivation not to combine the acetaminophen formulation of FR458- Example 1 with the 1000-3000 cP range of the ’4666 patent and the 200-900 cP range of WO133 since by his own admission doing so would yield bad results (i.e., impairing the dissolution characteristics of the acetaminophen) and generally undesirable higher viscosity. (PO Resp. 46 (citing Berkland Decl., Ex. 2009 ¶ 148).) Dr. Crowley’s cited testimony, however, is about general characteristics of suspensions for oral administration, whereas the WO133 refers specifically to sweetened analgesic formulations. (See Ex. 1006, 8:1– 3 (“The viscosity of the acetaminophen composition generally ranges from about 200–900 centipoise, preferably from about 300–700 centipoise.”); see Pet. Reply 8–9.) As Petitioner notes, Dr. Crowley also testifies that the viscosity of 29 commercially available, pediatric liquid oral antibiotic formulations were measured and determined to range from 20 to 1,780 cP” and that “[t]he viscosity of Children’s Tylenol has been reported to be less than 1,000 centipoise at shear rates between 0.05 and 0.2 reciprocal seconds.” (Ex. 1005 ¶ 58.) Thus, we are not persuaded that Dr. Crowley’s testimony contradicts the teachings regarding viscosity of analgesic formulations in the cited prior art.” slip op. at 23

  Patent outcomesUS 11,617,795 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 11,617,795
• Curio Bioscience, Inc. v. Prognosys Biosciences Inc. And 10x Genomics, Inc.Institution denied
  PTAB · Mar 19, 2025 · IPR2024-01289 · APJ Sheridan K Snedden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 11–15, 17, 19, and 27–29 were unpatentable over Cantor, Cantor and Armani, or Frisen.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’022 patent is unpatentable.” slip op. at 2

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

    “Petitioner does not argue that any claim term requires construction. Pet. 20. Likewise, Patent Owner takes the position that “no claim terms require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 20. We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 20. Because Petitioner’s unopposed definition is consistent with the ’022 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In particular, we agree with Patent Owner that “[n]ot only does Cantor not teach contacting a ‘tissue sample’ with beads, but Cantor comes nowhere close to suggesting that its beads could be contacted with a tissue sample to identify spatial location.” Prelim. Resp. 50. Here, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from biological material and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 17. More specifically, “nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Thus, these types of “bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples.” Id. at ¶ 17. While we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 39, citing to Dr. Puglisi, Ex. 1100 ¶¶ 65– 66), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mentions of “tissue” made in Cantor are in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue sample itself. Incidental to the parties’ dispute is whether Petitioner’s reliance on and characterization of Cantor’s use of the terms “sample” and “nucleic acid sample” as equivalent in meaning to “tissue sample” recited in the challenged claims is persuasive. Pet. 21 (citing Ex. 1031, 6). Here, we note that Cantor discloses that “[s]ample nucleic acid may be derived from one or more samples or sources.” Ex. 1031, 5; Ex. 2002 ¶¶ 35, 149. Cantor refers to “sample” as the thing that contains the sample nucleic acid. Ex. 1031, 5. For example, Cantor discloses that “[a] sample may be collected from an organism.” Ex. 1031, 6; Ex. 2002 ¶ 42. When a “sample” comes from a living (or formerly living) source, Cantor refers to that sample as a “biological sample,” which can “be in any form, including without limitation a solid material such as a tissue, cells, a cell pellet, a cell extract, or a biopsy, or a biological fluid . . . .” Id. Those samples, however, are further processed in bulk to obtain the nucleic acid sample. For example, Cantor discloses that the “sample nucleic acid may be a result of nucleic acid purification or isolation and/or amplification of nucleic acid molecules from the sample.” Ex. 1031, 7; see also id. at 54 (The “sample nucleic acid” is derived from a sample or source “by any means commonly known in the art, including but not limited to cell lysis procedures using chemical, physical or electrolytic lysis methods.”); Ex. 2002 ¶ 39. In view of the above, we are not persuaded by Petitioner’s attempts to characterize Cantor’s “nucleic acid sample” as synonymous to “tissue sample” recited in the challenged claims. Rather, we agree with Dr. Cantor that “[a] tissue is simply the source of the sample nucleic acid used in [Cantor’s] methods”—it is not the sample nucleic acid itself. Ex. 2002 ¶¶ 36, 150. Petitioner does not direct us to any persuasive evidence to the contrary.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,480,022
• Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentable
  PTAB · Mar 14, 2025 · IPR2023-01294 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1, 2, 6–9, 11, 12, 15–17, and 20 as obvious over Kim; claims 3–5, 13, 14, 18, and 19 over Kim and Ishibashi; and claim 10 over Kim and Goss.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “patent “would have had a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 5; see also id. (“A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard.”). Patent Owner very similarly proposes that the skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two to three years [of] experience in designing or developing telecommunication systems.” PO Resp. 24–25 (citing Ex. 2005 ¶42). Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’664 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “16). We generally agree, with the one caveat acknowledged by counsel for Patent Owner during the hearing. The caveat is that, although step [a] must be performed before step [b], it is within the scope of claim 1 if step [a] continues to be performed even after step [b] begins. Tr. 25:25–26:3 (Mr. Engel: “Well, I think in practicality, there would always be monitoring because there’s multiple media streams. So, you could have multiple alerts come in and the system could decide which one is more important. So, I don’t think you stop monitoring per se.”). We agree that continued performance of step [a], even after step [b] begins, is within the scope of claim 1. Second, Patent Owner proposes that “endpoint” means “end-user device,” as agreed to in district court. PO Resp. 10 (citing Ex. 2004, 16). We adopt this construction. However, as will become evident below, this construction does little to address the actual dispute between the parties regarding application of “endpoint” to the prior art asserted in Ground 7 (Kim). Third, Patent Owner proposes that “media stream” means “audio or video or both, which may include associated data,” as adjudicated in district court. PO Resp. 11 (citing Ex. 2004, 42). We adopt this construction.” slip op. at 12

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

    “Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29

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

    “2. Combination of Kim and Ishibashi Petitioner argues that both references are from the same field of endeavor as the ’664 patent, namely emergency communication systems. Pet. 80 (citing various portions of Exhibits 1001, 1008, and 1009). We are persuaded of this fact, which, in any event, Patent Owner does not dispute. See PO Resp. 57 (arguing against Ground 8 solely on the basis of its Ground 7 arguments). Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29

  Patent outcomesUS 8,831,664 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,831,664

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.