- PTAB · Jun 5, 2025 · IPR2025-00083 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR on all grounds for claims 1–9; the Board found a reasonable likelihood that claims 1–9 are obvious over Takeda and Yan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Contrary to Patent Owner’s arguments, the Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“early stage, we find that Petitioner has shown sufficiently, for purposes of institution, that the combination of Takeda and Yan teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Takeda and Yan for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s evidence. Based on the record at this preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Takeda and Yan.” slip op. at 27
- Skill levelSkill level petitioner adoptedOther
“had “a bachelor’s degree in electrical engineering, computer engineering, or a related discipline, knowledge of the relevant 3GPP standards” and “at least 2 years of experience working in a field involving wireless communications.” Pet. 10 (citing Ex. 1002 ¶¶ 38–40). Petitioner asserts a “person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. Petitioner also asserts a “person with less than 2 years of experience working in a field involving wireless communications could still qualify if the person has additional education that compensate[s] for their lesser experience.” Id. Patent Owner does not dispute Petitioner’s level of skill at this preliminary juncture. See generally Prelim. Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this early stage, neither party provides an express construction for any claim term and no express construction is necessary to resolve the conflict at this stage of the proceeding. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We, therefore, do not provide an express construction for any term at this preliminary stage in the proceeding. D. Asserted Obviousness of Claims 1–9 over Takeda and Yan” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,638,463 - Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00252 · APJ John A Hudalla · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 8–23 obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024); Paper 8 (referral to panel after no discretionary denial briefing under the Interim Processes memorandum). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art (“POSA”) “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 16–17 (citing Ex. 1001 ¶¶ 78–82). Patent Owner contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 20–21 (citing Ex. 2001 § IV.C). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“obviousness contentions based on Ellis and Spivey rely expressly on the use of a “known webserver” to perform the “transmitting first instructions” limitations excerpted above. See Pet. 28–34. Yet Petitioner does not specify how such a webserver would be integrated with the other elements from Ellis and Spivey cited by Petitioner. At best, Petitioner provides a background section on the known use of webservers (see id. at 11 (citing Ex. 1001 ¶¶ 49–53, 127–134)), but this does not provide a rationale for integrating a webserver in the Ellis–Spivey combination. We also have considered Petitioner’s cited testimony from Dr. Wicker supporting this background section. The first cited portion, which is located at paragraphs 49–53 of Dr. Wicker’s declaration, supports the premises in the background section, but does not include a rationale for adding a webserver to the Ellis– Spivey combination. See Ex. 1001 ¶¶ 49–53. The second cited portion, which is located at paragraphs 127–134 of Dr. Wicker’s declaration, includes a rationale for modifying the Ellis–Spivey combination to include a webserver.3 See Ex. 1001 ¶¶ 127–134. But that rationale is completely 3 The cited rationale in Dr. Wicker’s declaration appears to be tailored to support Petitioner’s obviousness contentions in IPR2025-00251, where unaddressed in the Petition. We decline to assume that Petitioner adopts Dr. Wicker’s testimony about the rationale as its position, because that would amount to improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). See Patent Trial and Appeal Board Consolidated Trial Practice Guide at 35–36 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)) (stating that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveInstitution deniedPTAB · Jun 3, 2025 · IPR2025-00251 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of success, chiefly due to unsupported webserver teachings and motivation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c. Analysis We are not persuaded by Petitioner’s rationale for adding a facilitator- type webserver to the Ellis–Spivey combination based on “POSA’s Knowledge.” First, Petitioner’s combination of Spivey with Ellis is already allegedly based on improving latency issues via the incorporation of Spivey’s LDSD and MQSD in Ellis’s system. See Pet. 22–24. Petitioner touts that this modification would result in reduced latency to a time period “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. at 23 (citing Ex. 1017 ¶ 96). But the Petition does not establish whether this latency improvement would or could be maintained when adding a separate webserver, as it has proposed. And Dr. Rubin testifies that the inclusion of an additional webserver—an additional component—is likely to create latency insofar as it must receive, process, and/or handle data. Ex. 2001 ¶ 305. We are persuaded by Dr. Rubin’s testimony, and we find that adding a webserver to Petitioner’s existing Ellis– Spivey combination tends to undermine Petitioner’s foundational rationale for combining these references, which is the reduction of latency. See Pet. 23.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Third, we agree with Patent Owner (Prelim. Resp. 49) that Petitioner does not explain sufficiently why an ordinarily skilled artisan would have added a facilitator-type webserver to the Ellis–Spivey combination when neither reference teaches or suggests a webserver for facilitating communication between a client and a socket server. Dr. Wicker’s supporting testimony stresses that “webservers were well-known components in streaming systems that were useful for facilitating communication between client devices and socket servers, and client devices and media sources.” Ex. 1001 ¶¶ 128–132. But “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to provide any persuasive reason with a rational underpinning why an ordinarily skilled artisan would have been motivated to add a webserver to the existing Ellis–Spivey combination.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 8. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 34 (citing Ex. 1001 ¶ 163). Thus, Petitioner argues that a “first event socket corresponding to the first event information” is “a socket where information about one sporting event is provided to VCDs.” Id. Patent Owner states that “[e]xcept for the ‘socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 20–21. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,871,088 - Digital Global Systems, Inc. v. Deepsig Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00194 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood for the remaining claims except claim 13, whose potential success did not justify instituting trial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent and at least two years of experience working with radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 16. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of prevailing in showing that claims 4–6, 12, 14, and 16–22 would have been obvious over Jüschke and Holt. Petitioner may satisfy its burden for claim 13, but, as discussed below, that would not impact our decision to exercise our discretion under § 314(a) to deny institution. See Section II.F.” slip op. at 16
- Other 314aInstitution denied discretionary otherInstitution denied
“inter partes review. SAS Inst. v. Iancu, 584 U.S. 357, 366 (2018). Specifically, “[i]f a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, . . . the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide, 64 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Here, thirteen challenged claims remain after Patent Owner’s statutory disclaimer. Petitioner at most demonstrates a reasonable likelihood of prevailing for one dependent claim, which has no claims depending therefrom. See Sections II.C–II.E. Thus, based on the particular facts of this case, we find that instituting trial would not be an efficient use of the Board’s time and resources, and we exercise our discretion to deny institution under § 314(a). See Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,777,540 - PTAB · May 14, 2025 · IPR2025-00021 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court proceeding to the Northern District of California (Ex[.] 1036[,] 8).” Pet. 73. However, on March 25, 2025, the District Court denied the motion to transfer. Ex. 2026. Thus, we find that factor 2 weighs in favor of exercising discretion.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree with Patent Owner on this record. The language of claim 1 recites “location access rights of said device from said first wireless device.” The claim language does not limit the location access rights to be of only the one other device, at the exclusion of other devices. The ordinary and customary meaning of “location access rights of said device from said first wireless device” encompasses rights that allow other devices, in addition to the recited device, to access location information. The disclosure in the written description is consistent with the ordinary and customary meaning. Although the written description states that an object of the invention is to provide a security feature which allows a user to limit or deny access to a particular user, the written description discusses other purposes served by the assignment of access rights. For example, the written description discloses that “[u]sers may be added, individually or in groups, to a list of users with location access rights to a specific user by that specific user. A specific user may, at any time, modify, delete, or add users allowed to access his or her location.” Ex. 1001, 3:22- 26. The written description further discloses that “a user may organize his/her user list into groups and assign access rights to that group (e.g., family member user group, close friend user group).” Id. at 13:9–12. The fact that the written description of the ’039 patent sets forth multiple objectives to be served by the access rights confirms that these terms should not be construed as limited to a single device. Phillips, 415 F.3d at 1327. Further, because the written description here includes an embodiment where a user assigns access rights to a group, we are persuaded that the scope of the disputed claim terms encompasses a group permission. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). At this stage, we interpret the scope of the “location access rights of said device from said first wireless device” to encompass at least the disclosed embodiment of assigning access rights to a group. Ex. 1001, 13:9– 12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have made Petitioner’s proposed combination of “Degnbol’s disclosure of both selection of location-based events and manual entry using the handset of the phone with Sheha, to improve user ease, given that such techniques were well-known and conventional to POSAs at the time of alleged invention.” Pet. 18 (citing Ex. 1003 ¶ 132). Degnbol describes that “[i]t is an advantage of the present invention that user ‘A’ can be alerted when user ‘B’ arrives or leaves the defined location(s) or area(s)” so as “to enable user ‘A’ to know in advance the proximity or approximate whereabouts of user ‘B’ before possibly acting upon this information by contacting user ‘B’ — or allowing ‘B’ to contact ‘A.’” Ex. 1035, 3:23–27. At this preliminary stage, we find that Petitioner provides sufficient rationale to combine the teachings of Sheha, Degnbol, and McNulty for purposes of institution. Based on the evidence and arguments currently of record, we find that Petitioner demonstrates sufficiently for purposes of institution that the Sheha, Degnbol, and McNulty combination teaches the features recited in claim elements [1D] through [1F] and Petitioner provides sufficient rationale to make its proposed combination. We find that Patent Owner’s arguments do not undermine Petitioner’s showing. c) Conclusion—Claim 1 After consideration of the arguments and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Sheha, Degnbol, and McNulty teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Sheha, Degnbol, and McNulty for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing. Based on the record at this preliminary stage, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Sheha, Degnbol, and McNulty.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,096,039 - PTAB · May 12, 2025 · IPR2025-00018 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“court proceeding to the Northern District of California (Ex[.] 1036[,] 8).” Pet. 75–76. However, on March 25, 2025, the District Court denied the motion to transfer. Ex. 2026. Thus, we find that factor 2 weighs in favor of exercising discretion.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“purposes of institution, we determine that Petitioner demonstrates a reasonable likelihood that independent claim 1 is unpatentable over Sheha.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“permission is operable of being provided by said first wireless device for said second wireless device to access location information about said location.” The claim does not recite that the permission is limited to permission for only the second wireless device. The ordinary and customary meaning of “a permission . . . for said second wireless device to access location information” encompasses a permission that allows other devices, in addition to the “second wireless device,” to access location information.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“On this record, in considering the background knowledge as well as the inferences that an ordinarily skilled artisan would draw from Sheha’s disclosure, we are sufficiently persuaded that a person of ordinary skill in the art would have caused the mobile telephone to display the map of Figure 5. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In an obviousness analysis, a court will “look to . . . the background knowledge possessed by a person having ordinary skill in the art” and “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). The references cited by Mr. Williams explicitly show what is already implicitly taught by Sheha, namely, that displaying the map of Figure 5 on a mobile telephone was within the background knowledge of a person of ordinary skill. Ex. 1003 ¶¶ 138–144; Ex. 1007 ¶¶ 2, 21, p. 85; Ex. 1016 ¶ 27; Ex. 1014, 3:28–31, 4:43–58; Fig. 4B; Ex. 1017, 4:38–57, 5:13–17, 6:14–27, 6:59–7:6, Fig. 2; Ex. 1018, 2:2–7, 3:59–67, 5:48–57, Fig. 4B. We agree with Mr. Williams, that a person of ordinary skill in the art, in light of the teachings of Sheha and his or her background knowledge, would have caused a mobile telephone to receive location information without initiating a telephone call and would have used the location information to display a map on the mobile telephone in a form similar to that shown in Figure 5 as taught by Sheha and as was well known in the art. Ex. 1003 ¶¶ 133–144.” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,122,418 - PTAB · May 12, 2025 · IPR2025-00124 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–46 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“WITHOUT PREJUDICE to refiling of the same within fourteen (14) days following the PTAB’s institution decision on the last of the pending IPRs” (Ex. 2008, 3), we decline to speculate whether the district court will grant a stay. Thus, we find that factor 1 is neutral. slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the arguments and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’575 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’575 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar degree, with one or two years of experience with wireless networks and devices, such as cellphones and personal digital assistants (‘PDAs’), as well as wireless positioning technologies, such as GPS or triangulation,” and that “[m]ore education could compensate for less practical experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 50–54). At this stage of the proceeding, Patent Owner does not challenge the level of ordinary skill in the art proposed by Petitioner’s expert. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’575 patent specification and the prior art.5” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner on this record. The language of claim 1, quoted above, recites “changing, at the direction of said first wireless telephone, a list of users on said remote server for a profile associated with said first wireless telephone that are allowed to access said location, wherein each user of said list of users is representative of one of a plurality of wireless telephones.” Ex. 1001, 12:65–13:3. The recitation of “said location” derives antecedent basis from element [1A], which recites “obtaining a location of a first wireless telephone,” thus “said location” in element [1C] is the location of the first wireless telephone. Id. at 12:62.7 The claim language does not limit access to the location of the first telephone to one other device, at the exclusion of other devices. Indeed, the claim language specifically recites that “a list of users” are changed “for a profile associated with said first wireless telephone” and that “each user of said list of users is representative of one of a plurality of wireless telephones.” Ex. 1001, 12:65– 13:3 (emphases added). The ordinary and customary meaning of “changing, at the direction of said first wireless telephone, a list of users on said remote server for a profile associated with said first wireless telephone that are allowed to access” to the location of the first wireless device “wherein each user of said list of users is representative of one of a plurality of wireless telephones” (Ex. 1001, 12:65–13:3) encompasses allowing “a list of users,” each having a telephone, access to the location of the “first wireless telephone” and further encompasses allowing other telephones, in addition to the recited plurality of wireless telephones access to the location of the first wireless telephone.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,374,575 - PTAB · May 12, 2025 · IPR2025-00019 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“WITHOUT PREJUDICE to refiling of the same within fourteen (14) days following the PTAB’s institution decision on the last of the pending IPRs” (Ex. 2008, 3), we decline to speculate whether the District Court will grant a stay. Thus, we find that factor 1 is neutral. slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the evidence and arguments currently of record, for purposes of institution, we determine that Petitioner demonstrates a reasonable likelihood that independent claim 1 is unpatentable over Sheha, Smith, and Carey.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar degree, with one or two years of experience with wireless networks and devices, such as cellphones and personal digital assistants (“PDAs”) as well as wireless positioning technologies, such as GPS or triangulation.” Pet. 4. (citing Ex. 1003 ¶¶ 50-54). Petitioner further contends that “[m]ore education could compensate for less practical experience, and vice versa.” Id. Patent Owner does not propose a level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree with Patent Owner on this record. The language of claims 1, 8, and 15, quoted above, recite that the “wireless” telephonic “device is operable to assign location access right to” one other wireless telephonic devices (claims 1 and 8) and that the “first wireless device is operable to assign a second permission to said second wireless device” (claim 15). The claim language does not limit the location access rights to be assigned only to the one other device, at the exclusion of other devices. Nor does the language regarding assigning a “permission” limit that assignment to a single (and only to the) second wireless device. The ordinary and customary meaning of “assigning . . . to said one of said plurality of wireless devices, “assigning . . . to said first wireless telephonic device” or “assign a second permission to said second wireless device” encompasses a right or permission that allows other devices, in addition to the recited device, to access location information. The disclosure in the written description is consistent with the ordinary and customary meaning. Although the written description states that an object of the invention is to provide a security feature which allows a user to limit or deny access to a particular user, the written description discusses other purposes served by the assignment of access rights or permissions. For example, the written description discloses that “[u]sers may be added, individually or in groups, to a list of users with location access rights to a specific user by that specific user. A specific user may, at any time, modify, delete, or add users allowed to access his or her location.” Ex. 1001, 3:22-26. The written description further discloses that “a user may organize his/her user list into groups and assign access rights to that group (e.g., family member user group, close friend user group).” Id. at 12:56−58. The fact that the written description of the ’283 patent sets forth multiple objectives to be served by the access rights or permission confirms that these terms should not be construed as limited to a single target device. Phillips, 415 F.3d at 1327. Further, because the written description here includes an embodiment where a user assigns access rights to a group, we are persuaded that the scope of the disputed claim terms encompasses a group permission. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). At this stage, we interpret the scope of the “assign access rights” and” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,204,283 - PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,094,868 - PTAB · Apr 21, 2025 · IPR2024-01490 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–30 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). We may not authorize an inter partes review unless the information presented in the petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we institute an inter partes review as to claims 1–30 of the ’731 patent on all grounds of unpatentability presented.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that an “IPR was filed against the same patent in proceeding number IPR2024-01489.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. “focuses on challenging the Patent Owner’s priority date.” Ex. 1017, 3–4. Petitioner ranks the instant petition second and argues the “petitions are materially different” with the instant petition addressing the challenged claims “using different prior art references that predate the alleged priority date.” Id. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because we are satisfied with Petitioner’s stated reasons for filing two petitions. See generally Ex. 1017. C. The ’731 Patent” slip op. at 2
- Skill levelOther
“Petitioner asserts that a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or a related degree, and at least four years of experience with graphical user interfaces, and at least two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 6–7 (citing Ex. 1003 ¶ 39). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner states that it gives the claim terms “their plain and ordinary meaning that they would have to a person having ordinary skill in the art [(‘PHOSITA’)] in view of the intrinsic evidence.” Pet. 6. At this early stage, neither party provides an express construction for any claim term. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We, therefore, use the ordinary and customary meaning and do not provide an express construction for any term at this preliminary stage in the proceeding.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,973,731
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.