- PTAB · Aug 27, 2025 · IPR2025-00574 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on claim 1 over Choe and Workman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Skill levelOther
“would have had a Bachelor’s in Computer Science with a focus on computer/machine vision, and at least two years of experience with each of: (1) machine learning (including neural network) methods as applied to machine/computer vision and (2) classical machine/computer vision algorithms (e.g., edge detection, line identification, computation of camera parameters from horizon line, etc.)” and that additional education “could serve as a substitute for the experience requirement.” Pet. 7–8 (citing Ex. 1003 ¶ 77). Patent Owner disagrees with Petitioner’s definition and asserts that a POSITA “would have a bachelor’s degree in engineering or computer science with one- or two-years training and/or experience in design of software for camera/sensor systems in the automotive industry.” Prelim. Resp. 12 (citing Ex. 2003 (Declaration of Scott Andrews) ¶ 35). 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 the parties continue to disagree regarding the level of ordinary skill in the art during trial, we encourage the parties to explain how an automotive-focused definition, or the lack thereof, would affect any obviousness analysis in our final written decision. B. slip op. at 5
- Expert testimonyOther
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,875,580 - 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 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,217,523 - PTAB · Feb 16, 2022 · IPR2021-01150 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 over Paxton, Sutton, and Ivershen, finding a reasonable likelihood of success on at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We concur with Petitioner’s assertions regarding the status of the underlying, related litigation. With respect to Fintiv factor (1), we determine this factor to be neutral. Although the parties stipulated to a trial date, the district court has yet to enter that schedule or hold a scheduling conference. The district court has continued the scheduling conference until after it decides the pending motion to stay. See Ex. 1031, Ex. 1032, 4:11–22. On this record, we are not persuaded that the district court will adhere to the previously agreed upon August 2022 trial date. Even with the arguments and evidence presented, we determine it to be speculative as to whether a stay may be granted if a proceeding is instituted. We reach the same conclusion with respect to Fintiv factor (2), given the speculative nature of the “trial date.” With respect to Fintiv factor (3), we determine that this weighs against discretionary denial; although some discovery has occurred, the parties have not invested significant resources in the district court proceeding.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Ivershen was submitted and discussed during the prosecution of the ’903 patent and in IPR2018-01654 and IPR2018-01655, Ivershen qualifies as art that was “previously presented” to the Office. Thus, we find that Ivershen, the same prior art asserted in the Petition, previously was presented to the Office. Nevertheless, Petitioner asserts that the other prior art references in” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Noting that relevant experience and education can substitute for each other, Petitioner states that a person of ordinary skill in the relevant art, at the time the ’903 patent was filed, had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 13 (citing Ex. 1003 [Declaration of Dr. Robert Akl] ¶¶ 18–20). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms require construction.” Pet. 13. Patent Owner asserts “no express construction of any term is required to resolve any controversy in this proceeding.” Prelim. Resp. 12. After review of the current record, we conclude that no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,530,903 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing
The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. 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 Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01153 · APJ Bryan F Moore · IPR · Institution
Institution denied because Petitioner did not show a reasonable likelihood of establishing claims 1–20 unpatentable as obvious over Jungck, alone or with RFC2003.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that Jungck meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that Jungck meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 22
- BurdenDecided for patent owner
“Whether or not this was known as a general proposition does not address reasons why Jungck’s traffic appears to bypass the edge servers upon which Petitioner relies and why a person of ordinary skill would have modified Jungck’s operation to apply its rules to all traffic or why a person of ordinary skill would have modified Jungck’s operation to use device 900 instead of the edge servers and what effect that would have on the rest of the operation of Jungck. Petitioner also appears to rely on its declarant who testifies it was well-known to block all incoming traffic. Fintiv Reply 9 (citing Ex. 1004 [Declaration of Dr. Vijay Madisetti] ¶¶ 72–73). Nevertheless, this section of the Declaration was not cited in the Petition but rather is referred to indirectly in a portion of the Declaration which is cited in the Petition. Pet. 44 (citing Ex. 1004 ¶ 241). Paragraph 211 of the Declaration states “[a]s also discussed in Section IV, the use of block lists (e.g., blacklists) to perform packet filtering, including both ingress and egress filtering, was well-known,” but does not refer to paragraphs 72 and 73. Ex. 1004 ¶ 211 (emphasis added). As the Court of Appeals for the Seventh Circuit has explained, “[a] brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999); see also United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Additionally, paragraph 72 of the Declaration contains new argument regarding “firewall” and “standard networking practice” based on references (Bharali and Wood) not cited for that proposition in the Petition. Ex. 1004 ¶ 72. We find the Petition improperly incorporates this section of the Declaration by reference because the basis of the “firewall” argument is not explained sufficiently in the Petition. Cisco Systems, Inc., v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 8 (PTAB Aug. 29, 2014) (informative opinion) (describing the proper course of action as “to not consider arguments that are not made in the Petition, but are instead incorporated by reference”).” slip op. at 16
- Skill levelSkill level petitioner adoptedOther
“other, Petitioner states that a person of ordinary skill in the relevant art on October 22, 2012 (the filing date of the application that matured in the ’437 patent), would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack. Pet. 16–17 (citing Ex. 1004 [Declaration of Dr. Vijay Madisetti] ¶¶ 34–36). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 6
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,567,437 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00862 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 5, 9–14, 17, 21, and 22 are unpatentable under §103 over the Golan-based combinations; the Board found the combinations taught the limitations and secondary considerations lacked nexus.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’332 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp. 12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims in its Preliminary Response. Prelim. Resp. 7–8. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived and we do not explicitly We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., 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 10
- BurdenUnpatentable
“We have reviewed Petitioner’s arguments, the supporting testimony provided by Dr. Durand, the cited portions of Golan, Martin, and Togo and the other cited evidence and we are persuaded that the proposed combination teaches the limitations recited in independent claim 1 as set forth above. Petitioner’s rationales for combining Golan and Martin and Golan, Martin, and Togo are set forth earlier in this Section, and is determined to be supported by sufficient rational underpinning for at least the reasons set forth above. Patent Owner’s contentions regarding secondary considerations of non-obviousness are set forth above and, as discussed, do not weigh in favor of non-obviousness because Patent Owner has not established a nexus between the claimed invention and the cited evidence. For the foregoing reasons, we conclude Petitioner establishes unpatentability of independent claim 1 over Golan and Martin by a preponderance of the evidence. Accordingly, we are persuaded that Petitioner demonstrates the unpatentability of claim 1 over the combination of Golan, Martin, and Togo by a preponderance of the evidence.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments, which are premised on a “physical” or “bodily” incorporation of limitations of one reference into the other. This is not the standard. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR Int’l Co., 550 U.S. at 418(the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art). Petitioner contends “Togo’s image-quality-based no-switching criterion teachings apply to the combination regardless of whether a distance between cameras is close or whether optical axes are parallel.” Pet. Reply 10 (citing Ex. 1040 ¶ 52). Petitioner seeks only “to incorporate Togo’s teachings of a no-switching criterion based on a specific ‘setting magnification X’ and ‘photography distance Y’ of an object to be imaged.” Pet. 32 (citing Ex. 1005 ¶ 15; Ex. 1010 ¶¶ 2, 37, 49; Ex. 1003 ¶ 68). Thus, Patent Owner’s argument does not undermine Petitioners showing For the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan, Martin, and Togo is supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. We are further persuaded that the cited evidence sufficiently supports Dr. Durand’s testimony.” slip op. at 43
Patent outcomesUS 10,356,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,356,332 - Apple Inc. v. Corephotonics, Ltd.All claims unpatentablePTAB · Dec 7, 2021 · IPR2020-00861 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 4, 8–12, 15, 19, and 20 are unpatentable as obvious over the Golan, Martin, and Togo combinations, with Levey, Border, or Parulski added for certain dependent claims.
RulingsFinal written decision- Skill levelOther
“Here, as explained below in Section III.E.2., under either articulation of the level of skill in the art Petitioner has shown the claims would have been obvious. Therefore, we do not need to determine whether knowledge of photography is required for the level of skill in this case. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Where a determination of level of skill would not change the result, “we find no harm under the circumstances of this case in the Board’s failure to set forth express findings as to the level of skill.”). For the reasons above, we determine, on the full record before us, that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’898 patent and the asserted prior art. We adopt that level for the purpose of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts “for the purposes of this proceeding and the analysis presented herein, no claim term requires express construction [and that it] analyzes the claims consistent with ordinary and customary meaning as would be understood by a POSITA in light of the specification.” Pet. 8. Patent Owner does not request construction of any claim term. See generally PO Resp.12 12 Patent Owner proposed a construction for the limitation “no-switching criterion,” as recited in each of the challenged claims, in its Preliminary Response. Prelim. Resp. 7–9. Patent Owner asserted “no-switching criterion” should be construed as “one more criteria determined based on inputs obtained from the two camera images.” Id. at 7. In the Institution Decision, we did not limit “no-switching criterion” to “one more criteria determined based on inputs obtained from the two camera images.” Patent Owner did not address claim construction in its Patent Owner Response. See generally PO Resp. Our Scheduling Order states that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 8, 8. Thus, Patent Owner’s proposed construction for the limitation “no-switching criterion” is waived, and we do not We do not discern a dispute between the parties regarding any limitation and we need not expressly construe any limitation to resolve the controversy before us. See, e.g., 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“from parallax, which Martin depends on. Id. at 40 (citing Ex. 2001 ¶ 84; Ex. 1001, 7:50–53). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). We are not persuaded that the invention claimed in the ’898 patent or Golan teaches away from Martin because they do not discourage or lead one in a direction divergent from Martin’s teachings relevant to “evaluat[ing] if a no-switching criterion is fulfilled or not fulfilled . . .” as recited in claim 1. In addition to providing an autostereoscopic display of 3D images using parallax images, Martin also discloses aligning these same parallax images using transformation parameters. See Ex. 1006, 5:38–42. Thus, Martin’s teaching of critical alignment does not appear to be divergent from or incompatible with the scope of independent claim 1 or the objectives of the ’898 patent. Nor is Martin incompatible with Golan for having a different objective. Petitioner need not show that Martin shares a common objective with Golan or the patent at issue. Intelligent Bio-Systems, 821 F.3d at 1367. Thus, Patent Owner’s teaching away argument does not undermine Petitioner’s contentions.” slip op. at 34
Patent outcomesUS 10,230,898 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,230,898
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.