- PTAB · Oct 6, 2026 · IPR2025-00530 · APJ Scott C Moore · IPR · Final written decision
Original claims 1–9 were canceled; the non-contingent motion to add substitute claims 10–18 was denied for lack of written-description support, and claim 18 was also indefinite.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“that either the ’303 application or the ’838 provisional contain adequate written description support for the disputed feature of limitation [10.d]. Though the disclosures cited by Patent Owner indicate that a secondary identifier can be used to aid in verification of a UAV, these disclosures also make clear that both first and second identifiers are transmitted by and received from the UAV. See, e.g., Ex. 2002, 4:15–17, 30:24–31:6; Ex. 2003 ¶¶ 14, 66. Patent Owner’s reliance on disclosure characterized as transmitting an identifier from a remote computing system “through the UAV” (Reply 2) is not persuasive. The cited disclosures from the ’303 application and ’838 provisional generally disclose that the identifiers transmitted by a UAV can be “generated remotely,” such as by a “remote computing system.” Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45. But Patent Owner has not identified disclosure indicating that a remote computing system may transmit an identifier to the identification receiver. In the ’303 application and ’838 provisional, only the UAV (which is part of the discrimination system, and thus not “remote”) actually transmits identifiers to the identification receiver. Patent Owner is correct in its assertion that an “aerial system identifier can be generated on-board the aerial system” or “generated remotely . . . at a remote computing system.” Mot. 7 (citing Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45). But even if a UAV’s identifier was at some time in the past generated by a remote computing system, the subsequent transmission of that identifier from the UAV to the identification receiver would not satisfy the plain language of limitation [10.d]. The claim language “receive … a second identifier from a computing system that is remote to the discrimination system” requires the receipt of a transmission of the second identifier from a remote computing system. This claim language limits the source of the received transmission (i.e., where the particular transmission is “receive[d] … from”). Thus, the relevant issue is from where was the recited second identifier received. The relevant is not where the second identifier was originally generated.” slip op. at 12
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“We determine that the disputed language in limitation [10.d] is not indefinite. There is no recitation in proposed substitute claim 10 that the second identifier is transmitted solely from the identifier transmission system. Thus, the alleged irreconcilable contradiction cited by Petitioner is not recited in the claims. Petitioner’s position appears to rest on the fact that the ’303 application and ’838 provisional do not disclose receiving the second identifier from a remote computing system. See Sur-reply 6 (“To manufacture written description support, [Patent Owner] argues the claim encompasses identifiers routed ‘through the UAV.’”). Though we agree that limitation [10.d] lacks adequate written description support, this defect does not render the claim indefinite because the scope of limitation [10.d] is otherwise reasonably certain based on its plain language. See supra § III.C.4.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date, deniedDecided for patent owner
“In contrast, the ’393 provisional never discloses that the described drone defense system may use the identity of a detected drone to develop a particular countermeasure. The disclosed RTSS certainly uses identity information to determine whether a drone is a threat. And if a threat is identified, the RTSS immediately starts “a series of processes … to determine what rule of engagement will be applied on the intruding drone.” Ex. 1006 ¶ 10. The ’393 provisional discloses that the system may select a particular countermeasure based on (i) the particular zone within a protected area within which a drone is located, (ii) “the behavior of the hostile drone,” or (iii) “other instructions.” Id. ¶¶ 9, 10. But the ’393 provisional never discloses that these “other instructions” may include the identity of the drone. The system disclosed in the ’393 provisional uses the identity of a drone to determine whether to activate the countermeasure system. See id. ¶¶ 16–18. But there is no disclosure in the ’393 provisional that the countermeasure system, once activated, uses the identity of the drone to develop the particular countermeasure to be employed. See generally Ex. 1006. Thus, though the Whitmarsh reference itself contains ample written description support for limitation [19e], the earlier-filed ’393 provisional does not. On this record, and having reviewed the ’393 provisional in its entirety, we determine that the ’393 provisional does not “reasonably convey[] to those skilled in the art that the inventor had possession of” the subject matter of limitation [19e] of Whitmarsh’s claim 19 “as of the filing date” of the ’393 provisional. See Ariad, 598 F.3d at 1351.” slip op. at 27
§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 10,249,199 - Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Soundclear Technologies LLCAll claims unpatentablePTAB · Jul 27, 2026 · IPR2025-00565 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–5 are unpatentable because Amazon showed they are anticipated by Shin; the Board did not reach Amazon’s contingent obviousness ground over Shin.
RulingsFinal written decision- BurdenOther
“Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–5 of the ’337 patent. For the reasons we identify below, we hold that Amazon has demonstrated by a preponderance of the evidence that these claims are unpatentable.” slip op. at 2
- Skill levelOther
“2. Level of Skill in the Art In determining whether an invention would have been obvious, we” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 17
Patent outcomesUS 11,069,337 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,069,337 - PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - PTAB · Oct 8, 2025 · IPR2025-00629 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Beard and Laufer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of one or more claims of the ’711 Patent. We, therefore, institute inter partes review of claims 1–20 on the grounds identified in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace or avionics fields, or (2) at least four years of experience in any of the above industries. 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the applications from which the ’711 Patent claims priority were all filed after this date, the post-AIA version of §103 applies. See Ex. 1001, codes (60), (63). 2 U.S. Patent No. 9,769,387 B1, iss. Sept. 19, 2017 (Ex. 1009). 3 U.S. Patent App. Pub. No. 2017/0059692 A1, pub. Mar. 2, 2017 (Ex. 1010). 4 U.S. Patent App. Pub. No. 2012/0106800 A1, pub. May 3, 2012 (Ex. 1021). 5 U.S. Patent App. Pub. No. 2017/0161911 A1, pub. June 8, 2017 (Ex. 1007). 6 U.S. Patent App. Pub. No. 2013/0301905 A1, pub. Nov. 14, 2013 (Ex. 1024). 7 U.S. Patent App. Pub. No. 2012/0004844 A1, pub. Jan. 5, 2012 (Ex. 1025). 8 PCT App. Pub. No. WO 2017/123477 A1, pub. July 20, 2017 (Ex. 1022). 9 U.S. Patent App. Pub. No. 2017/0160751 A1, pub. June 8, 2017 (Ex. 1005). Pet. 8 (citing Ex. 1003 ¶¶ 50–54). Patent Owner does not presently dispute Petitioner’s proposed formulation. See generally Prelim. Resp. For purposes of this Decision, we adopt and apply Petitioner’s formulation regarding the level of ordinary skill in the art because it is (1) consistent with the ’711 Patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Singhose. B.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“But the Detecting Limitations of claims 1, 19, and 20, merely require that a target be “detected.” The Detecting Limitations do not require that target detection be performed “aboard the reference UAV,” and claim 19 does not recite or require “machine learning.” Moreover, the Specification makes clear that the claims should not be limited to aspects of the disclosed embodiments, as Patent Owner proposes to do here. See, e.g., Ex. 1001, 2:56–59 (“The invention is described in connection with such embodiments, but the invention is not limited to any embodiment. The scope of the invention is limited only by the claims . . . .”) Patent Owner additionally fails to cite any lexicographic definition or clear and unambiguous disclaimer of claim scope sufficient to limit the claims in the manner it proposes. We, thus, are not persuaded that the Detecting Limitations require “applying aboard the reference UAV a machine learning model to the capture image for: (i) identifying a target in the captured image.”” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Priority Date of the Challenged Claims Petitioner contends that claims 1–20 of the ’711 Patent “should not have priority to the October 9, 2016 filing date of U.S. provisional [patent] application 62/405,972 due to a lack of written description support.” Pet. 3. Petitioner thus “assumes” a priority date of October 1, 2017 (the filing date of U.S. Provisional Patent Application No. 62/556,449) for purposes of this proceeding. Id. at n.2; see also Ex. 1003, code (60). Patent Owner does not presently dispute Petitioner’s contention that the ’711 Patent is not entitled to a priority date earlier than October 1, 2017. See generally Prelim. Resp. For purposes of this decision, we accept Petitioner’s undisputed contention that the ’711 Patent is not entitled to a priority date prior to 10 Any determination, no matter how designated in this Institution Decision (except our ultimate decision to institute), is preliminary and non-binding. Our Final Written Decision, based on a fully developed record of arguments and evidence, will state our binding determinations, findings, and conclusions. If a party disagrees with this preliminary construction, or any other determination set forth in this Institution Decision, that party should present its arguments at trial. The parties are reminded that any arguments not made during trial will be considered waived. Patent Owner is further reminded that arguments in the Preliminary Response are not preserved and will be considered waived at trial unless those arguments are re-raised in the Patent Owner Response. The parties are additionally reminded that arguments raised in subsequent briefing must be set forth in full in the briefs themselves, and may not be incorporated by reference from prior filings such as the Preliminary Response. See 37 C.F.R. § 42.6(a)(3). October 1, 2017.11 Accordingly, Petitioner has made a sufficient showing that all of the cited references qualify as prior art. See Pet. 4–6. D.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,514,711 - PTAB · Oct 8, 2025 · IPR2025-00530 · APJ Scott C Moore · IPR · Institution
Instituted review of claims 1–9 on all petition grounds after finding a reasonable likelihood that claim 1 is obvious over Whitmarsh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of at least one of the challenged claims. We, therefore, institute inter partes review of claims 1–9 on the grounds asserted in the Petition. B.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“permission module,” as used in claim 1, has “a well understood structural meaning in the computer technology field.” 792 F.3d at 1350. Rather, the limitation in question is “drafted in the same format as a traditional means-plus-function limitation, and merely replaces the term ‘means’ with ‘nonce’ word ‘module,’ thereby connoting a generic ‘black box’ for performing the recited computer-implemented functions.” Id. And, while claim 1 recites the “outputs” of the permission module (i.e., a determination regarding the permissions of an aerial system), “the claim does not describe how the [permission module] interacts with other components in the [discrimination system] in a way that might inform the structural character of the limitation- in-question or otherwise impart structure to the [permission module] as recited in the claim.” Id. at 1351. We also reviewed the Specification, and we agree with Petitioner that the Specification identifies the following structure as corresponding to the claimed permission module: “storage on-board the disruption module 105, storage on-board the identification receiver 102, a remote computing system connected to the disruption module…, or [] any other suitable computing system.” See Pet. 12; Ex. 1001, 9:64–10:4. slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“from nearby UAVs wireless communications that include information or signatures unique to the UAVs, such as a MAC [media access control] address of the UAV, that is used to identify the transmitting UAV.” Pet. 16– 18 (citing Ex. 1005 ¶¶ 20, 27; Ex. 1006 ¶¶ 8, 10, 13, 15–17; Ex. 1003 ¶¶ 117–118). For example, Petitioner cites Whitmarsh’s teachings that “[a]ll drones have a unique identifier, such as a media access control (MAC) address, that can be determined or read by the DDS [drone defense system] and can be used to identify the drone.” Id. at 16 (quoting Ex. 1006 ¶ 13). Based on these teachings, Petitioner submits that the signal received from the UAVs includes an aerial system identifier signal unique to the aerial system. Id. at 17–18 (citing Ex. 1005 ¶ 27; Ex. 1006 ¶ 13).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,249,199 - PTAB · Oct 8, 2025 · IPR2025-00525 · APJ Scott C Moore · IPR · Institution
The Board instituted review of claim 21 on all asserted grounds after finding a reasonable likelihood it is obvious over Beard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of claim 21, the sole challenged claim. We, therefore, institute inter partes review of claim 21 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Pet. 21 (citing Ex. 1003 ¶ 47). Patent Owner does not presently dispute Petitioner’s proposed formulation. See generally Prelim. Resp. For 3 U.S. Patent App. Pub. No. US 2016/0253907 A1, published Sept. 1, 2016 (Ex. 1010). 4 PCT Pub. No. WO 2016/078093 A1, published May 26, 2016 (Ex. 1011). 5 PCT Pub. No. WO 2016/154949 A1, published Oct. 6, 2016 (Ex. 1012). 6 U.S. Pat. App. Pub. No. US 2016/0127890 A1, published May 5, 2016 (Ex. 1013). 7 PCT Pub. No. WO 2015/043123 A1, published Apr. 2, 2015 (Ex. 1014). purposes of this Decision, we adopt and apply Petitioner’s formulation regarding the level of ordinary skill in the art because it is (1) consistent with the ’959 Patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Chowdhary. B.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“But before describing the embodiments cited by Patent Owner, the Specification plainly states: “Any terms not expressly defined herein have their conventional meaning as commonly understood by those having skill in the relevant art(s).” Ex. 1001, 4:64–67. Thus, the Specification itself cautions against construing the claim terms such as “secure identifier” as limited to the scope of the disclosed embodiments. Here, Patent Owner has not cited any express definition of “secure identifier,” or identified any explicit disclaimer of claim scope that might justify narrowing the scope of this claim term to specific embodiments disclosed in the Specification. In the absence of such a definition or disclaimer, we are not persuaded that the scope of the claim term “secure identifier” should be limited to specific aspects of the preferred embodiments cited by Patent Owner. See Prelim. Resp. 7–14. On this record, and at this stage of the proceeding, we decline to adopt Patent Owner’s proposed construction and preliminarily construe “secure identifier” as “a credential that can be used to securely verify the identity of a device, such as an airborne object or ground-based transmitter.”8” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“’071 Application lack adequate written description support for the “secure identifier” claim limitation. For a patent claim to be entitled to the priority date of an earlier-filed application, the earlier application must provide complete written description support for the claim as required by 35 U.S.C. § 112(a). L.A. Biomedical Rsch. Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1057 (Fed. Cir. 2017) (“L.A. Biomed”). To satisfy this requirement, the written description must “reasonably convey” to a person of ordinary skill in the art that the inventor had possession on the claimed priority date of each limitation of the later-claimed subject matter. L.A. Biomed, 849 F.3d at 1057. It is not enough that an earlier application’s disclosure “renders the later-claimed invention obvious;” as “the disclosure must describe the claimed invention with all its limitations.” L.A. Biomed, 849 F.3d at 1057. On this record, we agree with Petitioner that the ’153 Provisional and ’071 Application lack adequate written description support for the “secure identifier” limitation of claim 21. We have preliminarily construed “secure identifier” as “a credential that can be used to securely verify the identity of a device, such as an airborne object or ground-based transmitter.” See supra § II.B. As discussed above, the Specification of the ’959 Patent does not use the term “secure identifier,” but the Specification contains extensive discussion of the need for an identification credential that is secure (e.g., difficult for a bad actor to clone or impersonate). See, e.g., Ex. 1001, 1:56– 65 (discussing the need for a system that is difficult to “clone”), 10:20–49 (discussing the need “trust” between a drone and ground-based equipment, and the need for a way to verifying the drone’s credentials), 11:5–12:62 (disclosing the use of encryption and a rotating SSID to generate a secure identifier for a drone). None of the portions of the Specification cited above is present in the ’153 Provisional or the ’071 Application. See generally Ex. 1006, 1007. The ’153 Provisional and ’071 Application discuss the need for identifiers for low-altitude aircraft (see, e.g., Ex. 1006, 2; Ex. 1007, 9), but there is no discussion of any need for an identification credential to be secure or resistant to cloning or impersonation. See generally Ex. 1006, 1007. The ’153 Provisional and ’071 Application do not disclose the use of encryption, SSIDs (much less rotating SSIDs), or any other technologies for the purpose of verifying the authenticity of an identification credential. See generally id. Based on our review of the ’153 Provisional and ’071 Application, we preliminarily conclude that neither of these applications would have reasonably conveyed to a person of ordinary skill in the art that the inventor then had possession of the concept of the “secure identifier” that was later claimed in the ’959 Patent.” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,713,959 - Google LLC v. Withrow Networks Inc.InstitutedPTAB · Sep 29, 2025 · IPR2025-00775 · APJ Jason J Chung · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable, including over Carmel and Mattavelli.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Principles of Law A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of obviousness or non-obviousness (i.e., secondary considerations, such as commercial success, long-felt but unsolved need, failure of others, etc.).5 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds based on obviousness with the principles we identify above in mind.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Relying on the testimony of Dr. Polish, Google argues the following: [a] person of ordinary skill in the art . . . would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet. Additional education could compensate for less practical experience and vice versa.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Petition, Google states that it “does not presently contend that any [claim] term requires express construction.” Pet. 6. In response, Withrow acquiesces; in particular, Withrow argues “the Board need not construe any terms of the ’849 Patent. Petitioner does not contend any [claim] terms require express construction.” Prelim. Resp. 13 (citing Pet. 6). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See, e.g., 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Turning to rationale to combine, Google contends that Carmel and Mattavelli are both directed to processing multimedia data playback “for the appreciation of a user,” while providing the highest perceived audio and video output quality possible in view of system constraints to ensure playback continuity. Pet. 50–51 (citing Ex. 1003, 10:48–54, 11:9–18, 7:35– 49, Figs. 3D, 6B; Ex. 1004, 2309, 2310). Google argues that both Carmel and Mattavelli pertain to compression of multimedia data using well-known coding and compression standards for video streaming. Pet. 51 (citing Ex. 1003, 7:25–26, 11:24–52; Ex. 1004, 2309–2311). Google argues a PHOSITA would appreciate both Carmel and Mattavelli complement each other because Carmel pertains to addressing constraints to available network bandwidth, whereas Mattavalli relates to addressing limits on available processing resources at the client/multimedia player. Pet. 52 (citing Ex. 1003, Abstract, 7:36–41; Ex. 1004, 2309–2312). Google argues that a PHOSITA would have been motivated to combine the complementary teachings in Carmel and Mattavelli to create a more robust streaming system that addresses both bandwidth constraints and client processing limits to provide a best possible playback experience. Pet. 52 (citing Ex. 1002 ¶¶ 212–215). Google argues that Mattavelli teaches merely optimizing transmission bandwidth is not sufficient and is potentially harmful, which provides an express motivation to combine Carmel’s and Mattavelli’s complementary teachings to ensure that different, related links in the streaming playback chain are optimized together. Pet. 53 (citing Ex. 1002 ¶¶ 216–217; Ex. 1004, 2310). In addition, Google argues Carmel contains an express disclosure that would have motivated a PHOSITA to combine Carmel with Mattavelli’s complementary teachings because Carmel states that multimedia playback is achieved “preferably with only a minimal necessary transmission and decoding delay.” Pet. 53–54 (citing Ex. 1002 ¶ 218; Ex. 1003, 10:50–54). Withrow does not specifically respond to these arguments, except for limitations 1[c.ii] and 1[c.iv] discussed infra. See generally Prelim. Resp. Nonetheless, the burden of persuasion remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Based on the preliminary record, we discern no deficiency in Google’s characterizations of Carmel, Mattavelli, or the general background knowledge in the art. In addition, for purposes of institution, we are persuaded by Dr. Polish’s testimony concerning the relevant disclosures in Carmel and Mattavelli.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,771,849 - Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
Patent outcomesUS 11,488,451 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Mar 31, 2025 · IPR2025-00030 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR of claims 1–20 on all six asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11, 5–6. These factors relate to “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 20
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“they “apply a preponderance of the evidence standard to determine patent validity, which is a lower burden of proof than the clear and convincing evidence standard required in district court.” Prelim. Resp. 1. According to Patent Owner “[t]his discrepancy undermines the presumption of validity afforded to issued patents and makes it easier to invalidate a patent in an administrative forum than in a judicial proceeding.” Patent Owner cites no authority or evidence to support this argument. Moreover, the Supreme Court has held that the decision to grant a patent “is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the [U.S. Patent and Trademark Office’s (“USPTO’s” or “PTO’s”)] authority to conduct that reconsideration.” Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 584 U.S. 325, 334–35 (2018).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also explains why a person of ordinary skill would have been motivated to combine the cited references, again citing annotated figures from the cited references, specific disclosures from the references, and supporting testimony from Dr. Larson. See, id. at 21–23. Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,498,593 - PTAB · Mar 24, 2025 · IPR2024-01420 · APJ Frances L Ippolito · IPR · Institution
Instituted IPR of claims 1–19 on all presented grounds after finding a reasonable likelihood that at least one claim is unpatentable, and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–19 of the ’402 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’402 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner filed a Sotera stipulation. Paper 11. Petitioner’s Sotera stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution, Paper 24 at 12). Accordingly, this factor weighs against discretionary denial.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’402 patent “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent technical training. Additionally, they would have at least three years of experience in designing or programming internet-related processes, such as user profile management and/or web-based targeted advertising.” Pet. 5 (citing Ex. 1003 ¶¶ 53–55). For purposes of the Preliminary Response, “Patent Owner applies Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’).” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner: “Because the prior art asserted herein discloses the preferred embodiment within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims as part of these proceedings.” Pet. 9 (citing Ex. 1003, ¶ 57). Patent Owner responds that, at the preliminary stage of this proceeding, “no term needs explicit construction to resolve any controversy between the parties.” Prelim. Resp. 9. We do not need to construe any terms expressly to reach our decision on institution. 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))).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,562,402
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.