- PTAB · Dec 18, 2025 · IPR2025-01071 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–7, 12, 14, and 25 because Petitioner showed a reasonable likelihood of prevailing on its § 103 obviousness challenge over Bassompiere.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–7, 12, 14, and 25 of the ’687 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer any reason why we should deviate from the Board’s determinations in the prior IPRs that one of ordinary skill in the art would have had knowledge of Kalman filters and quaternion mathematics. Nor are we aware of any such reason. On the contrary, the Board’s prior determinations are consistent with the level of ordinary skill reflected by prior art of record. See Okajima v. 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). Bassompiere, for example, teaches using a data merging algorithm that is, “[a]dvantageously,” extended Kalman filtering. Ex. 1006, 4:17. Bassompiere also teaches using quaternions to determine a device’s pitch and roll about a horizontal reference frame. Id. at 6:3–8, 20:10–21:1. Patent Owner argues that Dr. Sarrafzadeh’s testimony regarding the level of skill in the art in this proceeding contradicts his testimony in the prior IPRs, which did not include knowledge of Kalman filters and quaternion mathematics in his definition of the level of ordinary skill in the art. Prelim. Resp. 24–26. Patent Owner asserts that this contradiction “undermin[es] his credibility.” Id. at 26. We disagree. The testimony Dr. Sarrafzadeh provided in the earlier IPRs obviously preceded the Board’s determinations in those proceedings that, on the whole record, including the testimony of then-Patent Owner’s declarant, the level of ordinary skill included knowledge of Kalman Filters and quaternions. Dr. Sarrafzadeh’s testimony in this proceeding reasonably aligns with those determinations. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties agree that the claimed “spatial reference frame” is associated with a device, has its origin at the same point in the device, and has axes that are always fixed with respect to the device. The only disagreement is whether that device is a “3D pointing device” or an “electronic device.” The Specification indicates that “electronic device” encompasses 3D pointing devices as well as, e.g., smartphones and navigation equipment, and therefore is the broader term. Ex. 1001, 13:20– 23. At this stage of the proceeding, we determine that the threshold question of institution can be decided under either construction, because Patent Owner does not dispute that the primary asserted reference, Bassompiere, teaches a “spatial reference frame” associated with a 3D pointing device. Pet. 25–27. Therefore, at this stage of the proceeding, we decline to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute). 2. “predicted axial accelerations” Petitioner does not propose a construction for “predicted axial accelerations,” but, in the concurrent California Litigation, contends that it should be accorded its “plain and ordinary meaning.” Ex. 2007, 3. In subsequent briefing that will be discussed more fully below, Petitioner asserts that its declarant, Dr. Sarrafzadeh, “applied the ‘plain and ordinary’ meaning for all claim terms, including the ‘predicted axial accelerations’ term,” in this proceeding. Paper 14, 1. Petitioner also submits in that briefing that “the term ‘axial acceleration’ (whether predicted or measured) . . . ordinarily encompasses three types of acceleration,” i.e., “linear, centrifugal, and gravitational.” Id. at 3, 4. Patent Owner contends that “predicted axial accelerations” should be construed as “[g]ravitational acceleration along the electronic device’s axes derived from the current quaternion.” Prelim. Resp. 18. Patent Owner asserts that “[t]he claims and specification consistently define ‘predicted axial accelerations’ as gravitational accelerations along the device’s axes at time T, derived from the current quaternion.” Id. (citing Ex. 1001, claim 1, 17:18–30, 17:45–52). Patent Owner further submits that “because ‘predicted axial accelerations’ are computed from the current quaternion they only contain gravitational accelerations along the device’s axes.” Id. at 19 (citing Ex. 2023 ¶ 23). Here too, the threshold question of institution can be decided without” slip op. at 14
- BurdenDecided for petitioner
“We disagree with Patent Owner’s characterization. The teaching to use quaternions instead of Euler angles comes from Bassompiere, not Dr. Sarrafzadeh. See Ex. 1006, 20:10–11 (“A first variant embodiment consists in replacing the angles of torsion θ and ψ by a quaternion formulation of the same torsion.”). Rather than supplying a missing limitation, we understand Dr. Sarrafzadeh to be explaining how a person of ordinary skill in the art would have implemented Bassompiere’s teaching to use quaternions instead of Euler angles given that person’s knowledge of quaternion mathematics. Patent Owner also argues that “switching from Euler angles to quaternions is not a routine substitution but requires the reengineering of the EKF.” Prelim. Resp. 28. Patent Owner similarly contends that Dr. Sarrafzadeh “devotes nearly twenty pages of his declaration to rewriting Bassompiere’s Euler-based equations ‘in quaternion form,’ and explaining how to convert them back to Euler angles,” and notes that “[a]s other researchers in the field have confirmed, ‘[w]hile implementing orientation tracking using quaternions provides advantages like avoiding gimbal lock, it is significantly more complex than the Kalman filer using Euler angles.’” Prelim. Resp. 32 (citing Ex. 1002, 31–51; quoting Ex. 2027, 1). Patent Owner thus contends that replacing Euler angles with quaternions “is not a ‘trivial’ substitution.” Id. at 32. But Petitioner does not appear to be arguing that replacing Euler angles with quaternions would have been “trivial” or simple, only that doing so was taught by Bassompiere and within the knowledge and capabilities of a person of ordinary skill in the art. Pet. 33–34. We determined above that a skilled artisan had knowledge of extended Kalman filters and quaternion mathematics, and we are required to consider the knowledge and capabilities of a person of ordinary skill in our analysis. Further, at this preliminary stage, Patent Owner’s assertion that the Euler angle/quaternion switch would not have been a routine substitution is supported only with attorney argument, which is entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc. 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, it does not outweigh Dr. Sarrafzadeh’s contrary testimony. See, e.g., Ex. 1002 ¶ 56.” slip op. at 29
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 11,698,687 - PTAB · Dec 17, 2025 · IPR2025-01023 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR on all asserted grounds against claims 1, 3, 7, and 9, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Conclusion as to Claim 1 Having reviewed the record and the parties’ arguments, we determine that Petitioner has a reasonable likelihood of prevailing with respect to claim 1, and therefore has satisfied the threshold requirement for institution of inter partes review on the basis of Ground 1. 3. Claims 3, 7, and 9 Petitioner contends that Bassompiere teaches the limitations of claim 3, 7, and 9, and supports its contentions with citations to Bassompiere and to Dr. Sharrafzadeh’s declaration. Pet. 57–63. At this stage of the proceeding, Patent Owner does not raise any arguments specifically directed to these claims. “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). We must “either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution.” CTPG at 5–6, 64; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (stating a decision to institute is “a simple yes-orno institution choice respecting a petition, embracing all challenges included in the petition”). Thus, because we have decided to grant institution on Ground 1 with respect to claim 1, we must do the same for claims 3, 7, and 9.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer any reason why we should deviate from the Board’s determinations in the prior IPRs that one of ordinary skill in the art would have had knowledge of Kalman filters and quaternion mathematics. Nor are we aware of any such reason. On the contrary, the Board’s prior determinations are consistent with the level of ordinary skill reflected by prior art of record. See Okajima v. 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). Bassompiere, for example, teaches using a data merging algorithm that is, “[a]dvantageously,” extended Kalman filtering. Ex. 1006, 4:17. Bassompiere also teaches using quaternions to determine a device’s pitch and roll about a horizontal reference frame. Id. at 6:3–8, 20:10–21:1. Nasiri teaches that quaternions can be used to represent a device’s “orientation in space.” Ex. 1008, 30:27– 30. Patent Owner argues that Dr. Sarrafzadeh’s testimony regarding the level of skill in the art in this proceeding contradicts his testimony in the prior IPRs, which did not include knowledge of Kalman filters and quaternion mathematics in his definition of the level of ordinary skill in the art. Prelim. Resp. 24–26. Patent Owner asserts that this contradiction “undermin[es] his credibility.” Id. at 26. We disagree. The testimony Dr. Sarrafzadeh provided in the earlier IPRs obviously preceded the Board’s determinations in those proceedings that, on the whole record, including the testimony of then-Patent Owner’s declarant, the level of ordinary skill included knowledge of Kalman Filters and quaternions. Dr. Sarrafzadeh’s testimony in this proceeding reasonably aligns with those determinations. Accordingly, for the above reasons, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree with Patent Owner’s characterization. The teaching to use quaternions instead of Euler angles comes from Bassompiere, not Dr. Sarrafzadeh. See Ex. 1006, 20:10–11 (“A first variant embodiment consists in replacing the angles of torsion θ and ψ by a quaternion formulation of the same torsion.”). Rather than supplying a missing limitation, we understand Dr. Sarrafzadeh to be explaining how a person of ordinary skill in the art would have implemented Bassompiere’s teaching to use quaternions instead of Euler angles given that person’s knowledge of quaternion mathematics. Patent Owner also argues that “switching from Euler angles to quaternions is not a routine substitution but requires the reengineering of the EKF.” Prelim. Resp. 28. Patent Owner similarly contends that Dr. Sarrafzadeh “devotes nearly twenty pages of his declaration to rewriting Bassompiere’s Euler-based equations ‘in quaternion form,’ and explaining how to convert them back to Euler angles,” and notes that “[a]s other researchers in the field have confirmed, ‘[w]hile implementing orientation tracking using quaternions provides advantages like avoiding gimbal lock, it is significantly more complex than the Kalman filer using Euler angles.’” Prelim. Resp. 32–33 (citing Ex. 1002, 31–51; quoting Ex. 2027, 1). Patent Owner thus contends that replacing Euler angles with quaternions “is not a ‘trivial’ substitution.” Id. at 33. But Petitioner does not appear to be arguing that replacing Euler angles with quaternions would have been “trivial” or simple, only that doing so was taught by Bassompiere and within the knowledge and capabilities of a person of ordinary skill in the art. We determined above that a skilled artisan had knowledge of extended Kalman filters and quaternion mathematics such knowledge, and we are required to consider the knowledge and capabilities of a person of ordinary skill in our analysis. Further, at this preliminary stage, Patent Owner’s assertion that the Euler angle/quaternion switch would not have been a routine substitution is supported only with attorney argument, which is entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc. 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, it does not outweigh Dr. Sarrafzadeh’s contrary testimony. See, e.g., Ex. 1002 ¶ 56.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties agree that the claimed “spatial reference frame” is associated with a device, has its origin at the same point in the device, and has axes that are always fixed with respect to the device. The only disagreement is whether that device is a “3D pointing device” or an “electronic device.” The Specification indicates that “electronic device” encompasses 3D pointing devices as well as, e.g., smartphones and navigation equipment, and therefore is the broader term. Ex. 1001, 8:35–39. At this stage of the proceeding, we determine that the threshold question of institution can be decided under either construction, because Patent Owner does not dispute that the primary asserted reference, Bassompiere, teaches a “spatial reference frame” associated with a 3D pointing device. Pet. 30–31. Therefore, at this stage of the proceeding, we decline to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,852,846 - Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Technology (Shenzhen) Co., Ltd. And Throughtek Co., Ltd.All claims unpatentablePTAB · Dec 15, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Final written decision
Claims 1–3, 5, 7–13, 15–19, and 23–25 are unpatentable: claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 as anticipated by Zhang; all challenged claims also as obvious over at least one …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 5 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or provide a proposal of its own. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“construction of “feature flag” is inconsistent with the language of claim 8, which states that “the feature flag indicates that the running state of the second apparatus is the sleep state.” Petitioner also argues that Patent Owner’s proposal is not supported by claim 24, which depends from claim 23 and states that “the feature flag is located at a header of the sleep login packet.” Id. at 3. We agree with Petitioner. The plain language of claim 8 states what a feature flag indicates. Claim 24 recites where the feature flag is located. Neither claim suggests any of Patent Owner’s additional limitations.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“[A] prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (alteration by Federal Circuit)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (alteration by Federal Circuit); In re Petering, 301 F.2d 676, 681 (CCPA 1962)). For the reasons explained below, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 are anticipated by Zhang. slip op. at 16
Patent outcomesUS 10,602,448 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution
The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- BurdenDecided for patent owner
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,557,788 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision
Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See 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)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · Mar 4, 2024 · IPR2023-01239 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). 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.” Upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’101 patent on the grounds of unpatentability presented. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”).” slip op. at 2
- Other 314aDecided for petitioner
“We are not persuaded it would be appropriate to deny institution merely on the basis of alleged trivial errors such as those identified by Patent Owner. See Prelim Resp. 1. To the extent Petitioner “cit[ed] the wrong Wang reference” (id.), this error was addressed in and corrected pursuant to our November 29, 2023, Order Granting Motion to Correct Clerical or Typographical Mistakes (Paper 13), entered prior to Patent Owner’s filing of the Preliminary Response, with Petitioner subsequently filing a corrected Petition and Declaration of Clifford Reader, Ph.D. Moreover, Patent Owner does not cite to any authority in support of discretionary denial of institution based on findings that a petitioner has not given a petition “due attention.” Cf. USPTO Notice of Proposed Rule Making “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board”, 88 Fed. Reg. 24,503 (April 21, 2023) available at https://www.govinfo.gov/content/pkg/FR-2023-04-21/pdf/2023- 08239.pdf. Accordingly, we decline to deny institution based on these arguments. 2. Identification of Claim Construction, Structure or Acts Corresponding to Means-Plus-Function Limitations Patent Owner asserts that the requested inter partes review should be” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the ’101 patent, the Examiner cited, inter alia, the Hejna prior art reference but did not apply or reject the claims based on that or any other prior art reference. Ex. 1002, 37, 39. There is no disagreement the Chou reference was never cited or considered by the Examiner. Under Becton, Dickinson factor (a), we consider the similarities and material differences between the asserted Chou and Hejna references. Patent Owner contends “[a]lthough Petitioner argues that Chou discloses or renders obvious element [1d], examination of the actual disclosure of Chou reveals that its disclosure is substantially the same as Hejna, prior art of record.” Prelim. Resp. 46. Patent Owner argues that Chou’s disclosures of (1) selecting a target arrival time for each frame sufficiently in advance of its playback time, (2) controlling an upper bound on the time of arrival of bits into the client buffer, and (3) selection of a code rate such that the frame’s arrival time is as close to the target arrival time as possible, relied upon by Petitioner for teaching limitation [1d], are substantially the same as that of Hejna. Id. at 46–47 (citing Pet. 35; Chou, Ex. 1004 ¶¶ 19, 27; Hejna, Ex. 2011, 4:60–63, 8:50–57, 14:3–7). Addressing Becton, Dickinson factors (a) and (b), Patent Owner fails to persuade us that Chou’s disclosure is substantially the same as or cumulative of Hejna’s. Even if, as alleged by Patent Owner, Hejna discloses subject matter corresponding to that disclosed by Chou, which subject matter is asserted by Petitioner as teaching claim 1’s element [1d], it is not clear why the disclosures are otherwise substantially the same. Although recognizing the Examiner’s reasons for allowance are based on the combination of limitations corresponding to claim 1’s elements [1b], [1d], and [1e], Patent Owner’s argument addresses only Petitioner’s reliance on Chou for teaching claim 1’s element [1d]. See Prelim. Resp. 46. Furthermore, evidence extrinsic to the disclosures themselves does not suggest Chou’s disclosure is likely to be the same or substantially the same as Hejna. For example, the two references list no inventor in common, do not relate back to a common priority document, we ascertain no commonly cited prior art references cited during their respective prosecutions, nor do we find any other indicia that the disclosures are the same or substantially the same. Compare Ex. 1004, code (75), with Ex. 2011, codes (56), (75).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“(ii) Motivations to Combine Second, at this preliminary stage, we are not persuaded by Petitioner’s contentions that a POSITA would have been motivated to combine the teachings of Chou and Wang. Pet. 74. As argued by Patent Owner, “Wang and Chou are directed to different technologies—active encoding applications and transport-layer protocols,” (see Prelim. Resp. 30, 34–35), and Petitioner does not persuasively explain, for example, why the two methods would be combined into a single method rather than implemented independently in their respective transport and application layers. (iii) Scope of Wang’s Teaching vis-à-vis Limitation [1d] Petitioner states “[i]f [Patent Owner] argues Chou doesn’t teach [1d], Wang does” (Pet. 62), concluding “Wang teaches calculating a change in code rate based on both the remaining time before reproduction start time and an available reproduction time, as required by [1d]” (id. at 63). Apart from a bare cross-reference to Ground 1 (see Pet. 62 (“See Ground 1, [1d]”)), Petitioner does not make any reference to Chou for teaching any aspect of limitation [1d] in connection the combination of Ground 2 (see generally id. at 62–65). Furthermore, although contending that “Chou and Wang both disclose controlling code rate to control buffer duration/fullness to prevent buffer underflow” (id. at 72), Petitioner does not clearly indicate that a POSITA would have had reason to combine Wang’s teaching of criteria used to maintain buffer fullness with Chou’s teaching of determining a code rate where the code rate “represents the data amount (the data size, e.g., the number of bytes) of content data for reproducing content at constant speed (reproducing content at 1x speed) for a unit time (e.g., one second)” (Ex. 1001, 7:7–11). Therefore, at this preliminary stage, we treat Petitioner’s Ground 2 as relying on Wang alone for teaching [1d].” slip op. at 54
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,752,101
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.