- Google LLC v. Brodti Inc.InstitutedPTAB · Jul 24, 2025 · IPR2025-00472 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 10, and 19 are obvious over Nicholas, Laidlaw, Mayadas, and Error.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- 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). Considering the subject matter of the ’898 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1002 ¶¶ 9–12), we apply the level of skill set forth above.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner submits that all terms in the Challenged Claims should be given their plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required to resolve this case. Pet. 6 (“Petitioner does not believe express claim construction is necessary to resolve this Petition.”). Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues the skilled artisan would have had various rational reasons for combining the teachings of these four references, and would have had a reasonable expectation of success in doing so. See, e.g., Pet. 18–21 (discussing reasons to combine Nicholas and Laidlaw and expectation of success in doing so), 33–37 (discussing reasons to combine Nicholas and Mayadas and expectation of success in doing so), 44–45 (discussing reasons to combine Nicholas, Laidlaw, Mayadas, and Error and expectation of success in doing so). Based on the record before us, we find Petitioner sufficiently shows that the combination of Nicholas, Laidlaw, Mayadas, and Error would have taught or at least fairly suggested to the skilled artisan the limitations of claim 1.4 Thus, for the reasons stated in the Petition (Pet. 8–51), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that independent claim 1 would have been unpatentable as obvious over the combination of Nicholas, Laidlaw, Mayadas, and Error.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,898 - Apple Inc. v. DH International Ltd.InstitutedPTAB · Jun 25, 2025 · IPR2025-00172 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that claims 1, 10–12, and 19 are obvious over Suga and Gorsuch.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’294 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’294 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the alleged invention of the ’294 Patent (“POSITA”) would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, or in a similar discipline with at least two years of experience with wireless communication devices and networks. More education can substitute for practical experience and vice versa. Pet. 10 (citing Ex. 1004 ¶ 34). Patent Owner states that it “agrees with Petitioner on the level of ordinary skill in the art.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 26–29).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Both parties rely on the language of claim 1 and the ’294 patent specification to support their respective constructions, and they emphasize that a user’s selective triggering of the control device does not issue different activation commands or control which data conveyance operation is used. Claim 1 recites an “invariable activation command” as a command that is “issued when said control device is selectively triggered by the user.” selectively trigger a control device “via one of a button, a keypad, a tactile screen, and a biometric parameter detector,” e.g., by entering a PIN that is authenticated, in order for an invariable activation command to be issued. Id. at 8:43–50, 10:26–29, 19:3–5. The claimed function of an invariable activation command is to “initiate[]” either a “first data conveyance operation” or a “second data conveyance operation” depending on whether “said switching element is in said first state” or “in said second state.” As explained above, the state of the switching element depends on whether or not an “activation cue” has been received by a “cue receiver.” The ’294 patent specification confirms the operation. Id. at 10:26–36, 15:14–28. The parties joust over the proper terminology for characterizing an “invariable” activation command, but they appear to agree on how the claimed cell phone and method work. The ’294 patent specification makes clear that the activation command is “invariable” in the sense that whenever a user selectively triggers the control device on the cell phone, for example by pressing a button on a keypad, the same command is issued to initiate a data conveyance operation regardless of the “state” of the “switching element” (i.e., in a “first state” or “second state”). The user cannot select or issue different activation commands. The selection of which of the two possible data conveyance operations will be initiated by selectively triggering the control device depends not on the activation command—it is always the same—but on whether the switching element has received an activation cue (“first state”) or not (“second state”). The ’294 patent neatly summarizes that “[t]he same invariable activation command will thus be issued upon [the] control device being triggered, and it is the state of [the]” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The ’294 patent claims and specification make clear that the switching element switches between a “first state” and a “second state” depending on whether or not an activation cue is received. Ex. 1001, 9:28–41, 14:53–59. The state of the switch, in turn, “allow[s] data to be conveyed according to alternate data conveyance operations.” Id. (emphasis added). Thus, the claim limitation is recited as a “data conveyance switching element,” not a “data switch,” because the switching element allows the device to switch between alternate operations for conveying data from the cellular phone to an external data exchange device. Id. Patent Owner’s proposed construction “conflicts with the express disclosure of the ’294 Patent.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (The “specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”) (citation omitted). On the present record, we determine that no further construction of claim terms is necessary to determine whether to institute a trial in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,022,294 - Apple Inc. v. DH International Ltd.Institution deniedPTAB · Jun 25, 2025 · IPR2025-00173 · APJ Brian P Murphy · IPR · Institution
Institution was denied for claims 1–13 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’333 patent. Accordingly, we do not institute an inter partes review of claims 1–13 of the ’333 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We adopt the parties’ agreed level of ordinary skill in the art, which is consistent with the description in the ’333 patent and the prior art of record.” slip op. at 10
- BurdenNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The Petition does assert an obviousness theory within the analysis of the “control device” limitation [1(b)]. Pet. 25–35 (citing Ex. 1003 ¶¶ 85– 109). The Petition asserts that a “POSITA would have been motivated to implement McGregor’s device pursuant to Palmer such that the security code would be automatically transmitted when the device detects the receive the security code.” Pet. 28; see also id. at 31 (“A POSITA would have been motivated to implement Palmer’s (1) RF field detection and handshake processes and (2) Palmer’s transceiver hardware in McGregor’s device.”) (citing Ex. 1003 ¶¶ 95–105). We find the Petition’s obviousness theory to be inherently inconsistent and non-specific with regard to the “data conveyance switching element” recited in limitation [1(e)].” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,628,333 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · May 21, 2025 · IPR2025-00038 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–7, 10–13, 16, 17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We do not adopt Patent Owner’s proposed construction. The disputed claim language merely requires that the display on the first or second screen is different in each image capture mode. Consistent with the claim language, the ’842 Patent discloses numerous examples of image capture modes in which a display on the first or second screen is different. See e.g., Ex. 1001, Figs. 12, 14A–14B, 15A–B, 16A–B, 20. Patent Owner’s construction is narrower than the claim language and incorrectly adds a requirement for a different display on the first screen between image capture modes or a different display on the second screen between image capture modes. See also Prelim. Resp. 16–17 (arguing that the claim requires the same screen to present different displays in different image capture modes). Patent Owner’s citations to the ’842 Patent are directed to an embodiment disclosing a preview image 1108 on first display 1200 that is in the portrait orientation in Figure 12 that, upon rotation of device 100, changes to preview image 1108 in landscape orientation 2004. See Ex. 1001, 35:65–36:2, 36:32–37:6; Figs. 12, 20, 21. Although claims are interpreted in light of the specification, it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.3d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. As demonstrated in the analysis below, at this stage of the proceeding, we need not explicitly construe “screen,” display,” “wherein in each image capture mode a display on the first or second screen is different,” or any other claim term or phrase. See, e.g., Realtime, 912 F.3d at 1375.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Because Chin specifies that the preview is shown on one screen or the other, and not on both screens in both modes, it is at least suggested and would have been obvious to a POSITA that the display on each of the screens changes between modes. Indeed, a POSITA would have understood that the screen not described as showing the preview would either be on or off. . . . And a POSITA would have been motivated to turn off (disable) that other screen, as the screen would not be facing the user and doing so would save power and avoid inadvertent inputs on the other touch screen during the image capture process. . . . Turning off power to one screen in a multi-screen device was a known design option and well within the ability of a POSITA. Pet. 55 (citing Ex. 1003 ¶¶ 257, 258).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,836,842 - PTAB · May 21, 2025 · IPR2025-00039 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–6, 11–14, and 16 over Aono under § 103, despite finding the showing for claims 11–14 and 16 insufficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, we determine Petitioner shows sufficiently for the purpose of institution that the preamble and foregoing limitations of claim 1 are satisfied by the teachings of Aono. For the purpose of institution and based on the record before us, Petitioner establishes sufficiently that the subject matter of claim 1 would have been obvious over Aono. Accordingly, there is a reasonable likelihood Petitioner would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner asserts that Aono discloses, suggests, or would have rendered obvious “presenting a first display for the image capture function based on a physical device state, a display mode and a device orientation” based on Aono’s disclosure of determining whether device 1 is closed, fully opened or partially opened (in steps S140, S160), whether device 1 is configured to display an image on one screen, more than one screen, or enlarged across one or more screens (steps S142, S145, S146, S149, S150, S161, S164, S165, S168, S169), and whether the device is in portrait or landscape orientation. See Pet. 27–40 (reproducing Ex. 1004, Fig. 1 (with Petitioner’s annotations added), Fig. 2 (with Petitioner’s annotations added), Fig. 60 (with Petitioner’s annotations added), Fig. 61 (with Petitioner annotations added), Figs. 26, 27, 37, 41; citing Ex. 1003 ¶¶ 73–106; Ex. 1004 ¶¶ 40, 143–145, 148–154, 203, 208, 225–227, 231–235, 272–288, 385– 417).4 Petitioner contends that Aono discloses, suggests, or would have rendered obvious “the physical device state at least including open, closed[,] easel[,] or modified easel,5 the display mode at least including portrait single, portrait dual, landscape single, landscape dual, portrait max[,] or landscape max,” based on Aono’s disclosure of digital assistant 1 that can be in a terminal opened state 4 Petitioner also asserts “[t]o the extent that it is deemed that the disclosures discussed with respect to this limitation relate to different embodiments of Aono, although such an interpretation would be wrong, a POSITA nonetheless at minimum would have found it obvious to combine different disclosures of Aono in the manner described above. Pet. 39; see Pet. 39–40. 5 Petitioner also asserts “[t]o the extent [Patent Owner] contends, incorrectly, that Aono does not disclose any one or more of the listed “physical device states,” at minimum Aono suggests and would have rendered obvious to a POSITA a device that can be configured in these states.” Pet. 45; see Pet. 45–46.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard as that applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the ’589 Patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 US 2012/0139815 A1, published June 7, 2012, filed July 12, 2011 (Ex. 1004). 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. Petitioner points out the express definitions for the terms “screen” and “display” set forth in the ’589 Patent. See Pet. 16–17 (citing Ex. 1001, 2:64–65, 3:29–30; Ex. 1003 ¶¶ 38–43). As demonstrated in the analysis below, at this stage of the proceeding, we need not explicitly construe “screen,” display,” or any other claim term or phrase. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that [a] person of ordinary skill in the art . . . (‘POSITA’) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field plus at least two years of work or post-graduate experience in image capture, image processing, image display, user interfaces, or a related field. Pet. 16. Petitioner also offers that “[a]dditional education could offset a lesser amount of experience and vice versa.” Id. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’589 Patent Specification and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,146,589 - PTAB · May 21, 2025 · IPR2025-00041 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1, 3–7, 9–10, 17–18, and 20 on all grounds, finding a reasonable likelihood that Yook anticipates at least claims 1 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. Based on the preliminary record, we adopt Petitioner’s as yet undisputed level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that construction of claim terms is not necessary to determine whether to institute inter partes review. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are invited to address any claim construction issues bearing on this inter partes review following institution.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991). We assess Petitioner’s evidence and argument according to the above- referenced anticipation standard. For the reasons given below, we determine the Petition satisfies the reasonable likelihood of prevailing standard under 35 U.S.C. § 314(a). We begin with a discussion of Yook.” slip op. at 11
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,058,153 - PTAB · May 21, 2025 · IPR2025-00040 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1–9 on all grounds, finding a reasonable likelihood that Yook anticipates at least claims 1 and 7 and Purcell anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We apply a two-part test when evaluating whether to exercise discretion under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we consider: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. In doing so, we consider the factors discussed in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.; informative) (“Becton, Dickinson”). Id. at 9– 11.” slip op. at 29
- 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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. Based on the preliminary record, we adopt Petitioner’s as yet undisputed level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,134,756 - PTAB · May 21, 2025 · IPR2025-00061 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 10, 16, 17, and 20 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Purcell and Nicholas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 (2024), 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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–5, 9, 10, 16, 17, and 20 of the ’007 patent on all presented challenges. 37 C.F.R. § 42.108(a) (2024) (“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.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of user interface technologies, including e.g., graphical user interface technologies, or a related field” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 20, 21). As noted above, Patent Owner has not yet responded. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that in the Petition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage, we do not need to adopt a particular interpretation of “[first or second] configurable area” to determine whether to institute review. 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)). Also, at this stage, we do not need to interpret expressly any other claim term. Id. For our analysis below, we apply Petitioner’s interpretations of “first configurable area” and “second configurable area” based on Patent Owner’s infringement contentions. Pet. 12–13; Ex. 1007, 1–33. The parties, however, are encouraged to explore further Petitioner’s proposed interpretations in their subsequent briefs.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In Petitioner’s view, one of ordinary skill in the art would have known how to implement Nicholas in Purcell and the advantages of doing so would have been readily apparent, thereby motivating the modification. Pet. 22–23 (citing Ex. 1002 ¶ 95; Ex. 1010 ¶ 10). Petitioner contends there would have been a reasonable expectation of success in making the proposed modification because of the known use of Microsoft Windows OS and the “modification would have been a predictable application of known Ex. 1002 ¶ 96; Ex. 1010 ¶¶ 13, 17). Petitioner notes that the proposed combination discloses, suggests, or would have rendered obvious “wherein the first image is in focus, wherein input options for the first application are displayed in a first configurable area, wherein input is allowed from the first configurable area and the first display,” consistent with Patent Owner’s interpretation from its infringement contentions. Id. at 24–25 (citing Ex. 1002 ¶ 99). b) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the present record, Petitioner sufficiently shows that the combination of Purcell and Nicholas teaches, suggests, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined these references in the manner asserted with a reasonable expectation of success. Petitioner, thus, shows a reasonable likelihood of prevailing in its challenge to claim 1 as unpatentable over Purcell and Nicholas.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,792,007
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.