- Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01340 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”). We adopt Petitioner’s assessment at this stage. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’704 patent and the asserted prior art. However, our obviousness analysis would have been the same under either party’s assessment. See id. (“My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“On this record, we find Patent Owner’s references to Marcus156’s “exemplary methods” and systems to be non-limiting. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (internal quotation omitted). “Absent disclaimer or lexicography, the plain meaning of the claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). Patent Owner points us to no disclaimer or lexicography in the specification, including in Marcus156.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Patent Owner attacks Petitioner’s “post-hoc rationalization for its proposed modification,” namely “more efficient processing or ‘simplifying processing and communications.’” Prelim. Resp. 26 (citing Pet. 18–19).14 Patent Owner asserts, in part, that Whitehead’s design already permits the “real time or near-real time” assembly of a custom media channel, so “it would be superfluous to include the same information again in the custom channel request.” Id. at 27–28 (citing, e.g., Ex. 1003, 4:40–44, 8:45–51, 11:45–49). At this stage, we tend to agree with Patent Owner. Petitioner acknowledges that “[m]ixing server 130 creates custom media channel 170 in real time or near real-time” yet asserts a POSITA would have modified Whitehead to speed up this process. See Pet. 18. If Whitehead already processes in real time or near real time, it is unclear why a skilled artisan would have sped up that process. Thus, Petitioner’s rationale does appear to be superfluous and hindsight-based at this stage.” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 8,145,704 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Mar 10, 2025 · IPR2024-01343 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Principles of Law Petitioner bears the burden of persuasion to prove unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if present, any objective evidence of obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“dedicated to claim construction, but Patent Owner does address claim construction in its discussion of Petitioner’s challenges. See, e.g., Prelim. Resp. 21–23 (Patent Owner arguing: “Petitioner’s ‘Feed Selection Mapping 2’ should be rejected because it relies on rewriting the claim so that it encompasses a device other than the aggregator providing user information to the publisher. . . . Because Whitehead’s alleged aggregator does not provide profiles to the alleged publisher in a channel request responsive to that request, ‘Feed Selection Mapping 2’ does not even meet the plain reading of the aggregator providing to the publisher ‘the media feed selection’ with ‘user information’ included.” (emphasis added)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Obviousness of Claims 1 and 2 over Whitehead (Ground 1)” slip op. at 9
- BurdenDecided for patent owner
“We find the Petition to be too confusing to follow. It is Petitioner’s burden to articulate a coherent and discernable case that is readily understandable by the Board and that places Patent Owner on notice of the basis of Petitioner’s case so that Patent Owner may have the opportunity to respond. See 37 C.F.R. § 42.104(b) (“[T]he petition must set forth . . . a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art.” (emphasis added)). In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its Whitehead obviousness challenge.” slip op. at 16
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,923,947 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Mar 10, 2025 · IPR2024-01341 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–10 unpatentable under any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’261 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“read limitations out of the claims.” (citation omitted)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 10
- BurdenDecided for patent owner
“Thus, according to Whitehead, the purported client device (media player 115) is a TV or monitor that displays menus, whereas the selection of programming is performed by the remote control 111 in conjunction with the set top box (content processing device 110). Petitioner does not explain adequately how the TV/monitor itself has the capability of selecting a program or, in terms of the claim, how the aggregator (set top box) receives a media feed selection from the TV/monitor. Petitioner’s lengthy string cite, see Pet. 21, is not an adequate substitute for an explanation in the Petition, and we decline to study all the cited portions to try to discern whether Petitioner might have a viable explanation as to how the TV/monitor selects programming.” slip op. at 12
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,215,261 - PTAB · Feb 28, 2025 · IPR2024-01445 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–20 based on all six asserted obviousness grounds under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the district court litigation was dismissed with prejudice on January 17, 2025. Prelim. Reply 1; Ex. 3001, 10. Accordingly, there is presently no parallel litigation to consider under Fintiv. Nevertheless, Patent Owner argues that “the dismissal of the complaint does not eliminate the relevance of the many Fintiv factors.” Prelim. Sur-reply 1. We disagree. Fintiv indicates that “[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6 (emphasis added). Here, we have not a stay of the district court litigation, but its dismissal with prejudice. See Ex. 3001, 10. Thus, concerns about inefficiency and duplication of efforts are not merely allayed, but are instead obviated.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board analyzes this issue under the following two-part framework set forth in the precedential Advanced Bionics case: (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 [the] 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). As an initial matter, there is no dispute that at least Garecau and TealLevel were not previously presented to the Office. See Prelim. Reply 2 (“Grounds 5 and 6 are based entirely on new references and therefore could not mirror [the prior art combinations asserted] by the Examiner.”); see generally Prelim. Resp. Garecau and TealLevel are the only two references in Grounds 5 and 6. See Pet. 3. Patent Owner does not argue that Garecau and TealLevel, or the arguments presented in these grounds, are the same or substantially the same as art or arguments previously before the Office. See generally Prelim. Resp. 10–16 (making no § 325(d) arguments based on Garecau or TealLevel or directed to Grounds 5, 6). Accordingly, because there is no dispute that Grounds 5 and 6 present art and arguments that were not previously before the Office, in this case we find that § 325(d) is not slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response (and any additional authorized briefing of record) shows a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We additionally agree with Petitioner that the level of skill proposed by both parties is substantially the same. Specifically, both parties propose a similar education level (Bachelor’s degree in a relevant field of science or engineering) and similar experience (1–2 years of industry experience, including knowledge of sensor design and application development). We observe that in Patent Owner’s proposal, the recited experience is possibly a bit more specific than in Petitioner’s proposal (e.g., it recites “commercial app development” experience and some programming experience). See Prelim. Resp. 3 (emphasis added). However, at this stage and absent argument to the contrary, we discern no material difference between the parties’ proposals. Petitioner’s proposal is consistent with the level of ordinary skill reflected in the prior art references of record, and unlike Patent Owner’s proposal at this stage, is supported by declarant testimony. See Okajima, 261 F.3d at 1355. Accordingly, for purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s proposal, the outcome of this Decision would be the same.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,890,925 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Feb 25, 2025 · IPR2024-01339 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–20 because the petition did not show a reasonable likelihood of proving the claims obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’597 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’597 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 4–5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 26.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner cites the Alermoth Declaration, paragraphs 198–201, but does not explain the content or pertinence of this testimony. See Pet. 21. We have reviewed this testimony and determine that it is conclusory. This testimony repeats, almost verbatim, the language in the Petition without any further explanation or supporting reasoning or evidence. See Ex. 1002 ¶¶ 198–201. We accord this testimony little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to Petitioner’s contention that “it would have been obvious for a POSITA to modify Ferman’s system to more explicitly select clips for inclusion in the final video programming based on their ability to transition between other events,” we determine that this contention is not adequately supported by articulated reasoning. See Pet. 48. Petitioner asserts that, “[a] POSITA would have been motivated to do so by at least Ferman’s expressed desire to ‘include content suited to [the user’s] particular viewing preferences.’” Id. (citing Ex. 1002 ¶ 89). There is no articulated reasoning (and we can discern none) as to how or why including content suited to a user’s preferences would have motivated a skilled artisan to modify Ferman to select transitional clips. Petitioner also asserts, “doing so would provide more compelling and cohesive video programming.” Id. There is no articulated reasoning or explanation for this assertion and we find this statement to be too general and unsupported. We determine that Petitioner has not established that a skilled artisan would have been motivated to modify Ferman’s system as proposed in the Petition. Patent Owner argues that “Petitioner fails to demonstrate that Ferman discloses ‘identifying . . . a plurality of first[/second] transitional clips.’” Prelim. Resp. 39 (alteration in original). We agree with Patent Owner that the Petition fails to provide adequate support for its assertion that limitations 1[d] and 1[j] are taught or suggested by Ferman.” slip op. at 26
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,317,597 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Feb 25, 2025 · IPR2024-01338 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all grounds because the petition did not show a reasonable likelihood of prevailing on any challenged claim, including deficiencies in the Marcus156- and Ferman-based obviousness showings.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION We have weighed the evidence presented by Petitioner and considered its arguments. We determine that Petitioner fails to establish a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition. For each challenged claim in each asserted ground of unpatentability, Petitioner fails to establish that the asserted art teaches or suggests multiple recited limitations. Accordingly, we determine that trial should not be instituted on claims 1–20 of the ’185 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’185 patent. 3 1 Petitioner identifies TikTok Inc., Bytedance Ltd., Bytedance Pte. Ltd., and TikTok Pte. Ltd. as real parties-in-interest. Pet. 2. 2 Patent Owner identifies itself, NTECH Properties, Inc., as the real party-ininterest. Paper 4 (Patent Owner’s Mandatory Notices), 1. 3 In addition to the Petition and Preliminary Response, Petitioner’s Preliminary Reply (Paper 7) and Patent Owner’s Preliminary Sur-reply (Paper 8) were filed. However, these papers were limited to arguments related to discretionary denial under 35 U.S.C. § 325(d). We do not reach the issue of discretionary denial in light of our decision to deny institution on the merits.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’185 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 23. Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner. It is not disputed by the Patent Owner and is consistent with the ’185 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). The “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Neither Petitioner nor Patent Owner requests express claim construction. Pet. 5; Prelim. Resp. 23. And, no need exists to expressly construe any claim terms to resolve this dispute. 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,875,185 - PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 [the] 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. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 [the] 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. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,400,358 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,561,104
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.