- PTAB · Apr 1, 2025 · IPR2024-01396 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–19 under all petition grounds, finding a reasonable likelihood of success on obviousness; the majority declined Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“independent claims’ features. The vast majority of Petitioner’s assertions are uncontested at this stage. Further, Petitioner’s evidence shows that Bennett discloses “a first network stack Application Programming Interface (API), containing at least one first call accessible to each of a plurality of device applications, the first network stack API callable by each of the plurality of device applications to open and use data packet flows via the network stack, the wireless modem, and the at least one wireless network,” which is the only limitation that Patent Owner disputes at this stage of the proceeding. See infra, Section III.2. For the sole feature missing from Bennett—i.e., application-based data usage monitoring—Petitioner presents clear and uncontested evidence, backed by multiple prior art references, that the technique and its benefits were well known, as outlined below. Petitioner also articulates, with clear support from its expert and the prior art, not just one but several reasons that would have motivated a skilled artisan to combine Vadde’s application-based data monitoring technique in Bennett. For these reasons, we determine that the merits of at least one ground raised in the Petition are particularly strong. Thus, this factor weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness analysis. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and we are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenges to the challenged claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communication network applications and software.” Pet. 2. Further, “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 8. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’918 patent.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“modem, network stack, and Application Programming Interfaces. Pet. 19– 29. Petitioner further relies on Bennett for its disclosure of routing network data via a first network stack application programming interface (“API”) or a second API call to a proxy media service manager that interfaces with the network stack. See id. at 29–43. Petitioner adds Vadde for teaching managing data traffic for applications using a policy-based system that enforces restrictions based on an application’s data usage. Id. at 44–57. With support from its expert Dr. Traynor and a number of prior art references, Petitioner explains that “the benefits of data usage monitoring were well-known prior to the ’918 Patent and would have been part of a POSITA’s general knowledge.” Id. at 15 (citing Exs. 1003, 1044, 1045, 1062, 1063). Petitioner articulates a number of those benefits including, for example, to facilitate identifying and restricting data-intensive applications to reduce battery usage and to facilitate greater control over data-intensive application activities that risk degrading networks high costs for users. Id. at 15–17 (citing Exs. 1003, 1041, 1042, 1046). In addition, Petitioner explains that adding per-application data usage monitoring to Bennett’s device “would have enabled device manufacturers and service providers to incorporate additional applications and functionality into wireless devices while allowing users to retain control of aggregate device data usage.” Id. at 17 (citing Exs. 1003, 1042). Petitioner adds three references, Riggs, Hendrickson and Srikantan, for their disclosures of various dependent claim features including log generators/reports, storing data associated with played media content, and a network resource indicator that identifies the media object. Pet. 58–95.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,647,918 - PTAB · Mar 20, 2025 · IPR2024-01407 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claim 26 on the Shell and Cole §103 ground, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on a holistic analysis of the Fintiv factors taking into consideration “whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering these disclosures together with the cited paragraphs of Petitioner’s declaration, Petitioner sufficiently shows on the present record that one of ordinary skill in the art would have understood that, in Shell, when a user attempts a voice call, the user can cause a current data connection to disconnect, because (1) a voice-related connection request will be made, (2) the request for voice connection will be prioritized over data requests, and (3) the request will also be prioritized if it is coming from an active application rather than an application running in the background. Pet. 47; Ex. 1003 ¶ 140; Ex. 1005 ¶¶ 8, 13, 14, 57. On the preliminary record, the relied-upon portions of Shell adequately show a determination of whether an application is an active application for prioritization purposes and disconnecting a current data connection due to a user attempting to make a voice call. Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call would be a user interaction resulting in a request for a voice connection that would be prioritized over the data request of another application using the current data connection. See Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call also involves a user interacting with an application to make it an active background. See Ex. 1003 ¶ 140. Petitioner, thus, sufficiently shows for institution that Shell’s processor is “configured to determine that the different application is an active application based on a user interaction with the different application,” as required by claim 26. Pet. 47; Ex. 1003 ¶ 140.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“One of ordinary skill in the art, Petitioner argues, would have, thus, been motivated to look to references, such as Cole, that provided mobile devices with network access while addressing cost, power, and network selection. Pet. 13–14 (citing Ex. 1003 ¶ 68; Ex. 1006, code (57), ¶¶ 14–15, 78, 83, 88, 98). Petitioner also argues that Cole describes Internet access control techniques based on conditions, such as power state change and load on current communication links, and that applying Cole to Shell would have “promoted more efficient communications and network access connectivity.” Id. at 14 (citing Ex. 1003 ¶ 68; Ex. 1006 ¶¶ 83, 98). Using Cole’s techniques, the proposed combination, Petitioner explains, would have evaluated network and power conditions, determined whether to apply an Internet access control, evaluated further conditions, such as whether the application is running in the foreground or background, and then determined the priority of packets traveling over the selected network. Pet. 14 (citing Ex. 1003 ¶ 68; Ex. 1005 ¶ 92; Ex. 1006 ¶¶ 11, 78, 83, 88, 98). Petitioner also argues that one of ordinary skill in the art would have incorporated Cole’s communication manager 260 into Shell’s connection manager modules 210 and would have incorporated Cole’s connections.” Id. at 14–15 (citing Ex. 1003 ¶ 70; Ex. 1005 ¶ 32, Fig. 1; Ex. 1006 ¶ 31). Petitioner further argues that the proposed combination would have included the processors, non-transitory memory, and display, as taught by both references, to perform the recited operations. Id. at 15 (citing Ex. 1003 ¶¶ 71–72; Ex. 1005 ¶¶ 38–44, Fig. 1; Ex. 1006 ¶¶ 34, 40, Fig. 2). Petitioner additionally argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because it “would have required only routine programming knowledge well within [ordinary] skill,” “would have amounted to nothing more than the use of a known technique to improve similar devices . . . in a similar way,” and would have been “combining prior art elements according to known methods to yield predictable results.” Pet. 15–16 (citing Ex. 1003 ¶¶ 73, 74; Ex. 1005 ¶¶ 36, 40; Ex. 1006 ¶¶ 34, 35, Fig. 2).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s declarant opines that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in services and application implementation in communication networks.” Ex. 1003 ¶ 15. The declarant also opines that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. “For purposes of [its] Preliminary Response, Patent Owner does not challenge that definition.” Prelim. Resp. 5 (citing Pet. 13 n.2; Ex. 1003 ¶ 15); see also Ex. 2010 ¶ 27 (stating “[f]or purposes of . . . my analysis, I do not disagree with this proposed level of skill in the art”). Based on the” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,179,359 - PTAB · Mar 13, 2025 · IPR2024-01337 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–30 on all presented grounds after finding a reasonable likelihood that the Jobs, Jones, and Rao combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security.” Ex. 1003 ¶ 24. The declarant also opines that “[a]dditional advanced education could compensate for a deficiency in work experience, and vice-versa.” Id. As noted above, Patent Owner has not yet responded. Based on the record at this stage, we preliminarily adopt the level of ordinary skill provided by Petitioner’s declarant to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“several “means for” performing functions without reciting structure and, thus, those limitations should be construed under 35 U.S.C. § 112, ¶ 6. Pet. 3 (citing Ex. 1001, 165:20–38). Petitioner also contends that the ’110 patent describes a device with a processor, service processor 115 being implemented on the processor, and the implementation being accomplished (citing Ex. 1001, 26:43–37:2, Figs. 9–15). According to Petitioner, “[s]ince the service processor is implemented on the processor, the corresponding structure for each of the ‘means for’ elements is a processor configured to perform respective algorithm steps for the recited function corresponding to each element.” Id. at 5 (citing Ex. 1003 ¶ 52). Petitioner specifically asserts with citations to the record the functions and corresponding structures for each of the “means for” limitations. Pet. 5– 11. After reviewing Petitioner’s arguments and evidence, we adopt Petitioner’s proposed interpretations. In particular, regarding “means for obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy,” we preliminarily agree that the function is “obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy” and “the corresponding structure includes a [user interface (UI)] and a processor configured to perform the algorithm steps of providing the user with information and accepting user choices or preferences on, e.g., service plan selection or change, and/or other service related information, settings, and/or options.” Pet. 6–7 (citing Ex. 1001, 27:15–29, 28:41–48, 65:41–51, Fig. 42D; Ex. 1003 ¶¶ 53–55).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“In particular, regarding “means for obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy,” we preliminarily agree that the function is “obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy” and “the corresponding structure includes a [user interface (UI)] and a processor configured to perform the algorithm steps of providing the user with information and accepting user choices or preferences on, e.g., service plan selection or change, and/or other service related information, settings, and/or options.” Pet. 6–7 (citing Ex. 1001, 27:15–29, 28:41–48, 65:41–51, Fig. 42D; Ex. 1003 ¶¶ 53–55). Regarding “means for identifying that the wireless device is connected to the first wireless network,” we preliminarily agree that the function is “identifying that the wireless device is connected to the first wireless network” and “the corresponding structure includes a processor configured to perform the algorithm steps of recognizing the type of network to which the device is currently connecting, e.g., by looking up the 51:4–13; Ex. 1003 ¶¶ 56–59). Regarding “means for identifying an intended, attempted, or successful data communication over the first wireless network, the intended, attempted, or successful data communication being associated with the first service activity,” we preliminarily agree that the function is “identifying an intended, attempted, or successful data communication over the first wireless network, the intended, attempted, or successful data communication being associated with the first service activity” and “the corresponding structure includes a processor configured to perform the algorithm steps of implementing traffic inspection points between the applications and the networking stack application interface using a T-buffer at socket connections and feeding the side traffic into a traffic flow analyzer.” Pet. 8–9 (citing Ex. 1001, 29:10–32, 53:51–55, 53:58–63, Fig. 16; Ex. 1003 ¶¶ 60–64). Regarding “means for applying the first service policy,” we preliminarily agree that the function is “applying the first service policy” and “the corresponding structure includes a processor configured to perform the algorithm steps of performing a service control that reduces traffic speed for all applications and traffic types successively until the service usage projections are within service usage limits for the present service billing period.” Pet. 9–11 (citing Ex. 1001, 43:38–49:1, Fig. 16; Ex. 1003 ¶¶ 65– 68).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,588,110 - PTAB · Mar 7, 2025 · IPR2024-01176 · APJ Jason M Repko · IPR · Institution
Instituted IPR of claims 1–23 on all petition grounds; the Board found a reasonable likelihood of success on at least one claim based on MPEG-1.
RulingsInstitution decision- 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). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the ’148 Patent would have had a (1) Bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a comparable field of study such as Physics, and (2) approximately 2-3 years of practical experience with video and/or image processing or coding. More education could substitute for experience, and vice versa. Pet. 5–6 (citing Ex. 1003 ¶¶ 23–24). Patent Owner applied Petitioner’s definition in the Preliminary Response. Prelim. Resp. 16 (Pet. 5–6). At this stage, we adopt Petitioner’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’148 patent and the asserted prior art and (2) it is supported by the testimony of Dr. Eli Saber.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“For purpose of institution, we preliminarily determine that claim 1 requires a sequence-level parameter. The claims themselves provide “substantial guidance” regarding the meaning of claim language. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, claim 1 recites that the level is for encoding a “sequence.” Ex. 1001, 25:56–60. Claim 1 expressly recites that “the digital video sequence compris[es] a number of frames.” Id. at 25:43–44. In this way, claim 1 defines a sequence to exclude a single picture. This reading is consistent with the specification’s focus on a sequence-level solution. According to the ’148 patent, “The present invention improves prior art solutions for indicating QP related information by introducing a sequence level QP” (SQP). Id. at 11:25–27 (emphasis added). Indeed, Petitioner acknowledges that the SQP is the purported improvement. See Pet. 5. Patent Owner agrees. See, e.g., Prelim. Resp. 8–9, 25–26. Claims are not normally interpreted “in a way that excludes embodiments disclosed in the specification.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). A trial could produce additional evidence that may support a determination in the Final Written Decision that defining a picture-by-picture quantization level is somehow “for use in encoding of the digital video sequence.” But, at this stage, the parties have given us little reason to adopt such a construction. There is no dispute that H.263 signals PQUANT at the Picture layer. Pet. 51; Prelim. Resp. 25. Indeed, the basis for Petitioner’s challenge is that PQUANT defines the quantizer for a picture and is updated for GOBs or macroblocks within the picture. Pet. 53. We disagree with the interpretation used in Petitioner’s challenge: a picture-layer quantization parameter falls within the scope of the claim. Id. at 51. Rather, for the reasons discussed above, we preliminarily determine that the claims require a sequence-level parameter. And Petitioner has not sufficiently explained why PQUANT is a sequence-level parameter. Thus, we cannot conclude that Petitioner has shown a reasonable likelihood of prevailing in its challenge to claim 1 with respect to H.263. See id.; Prelim. Resp. 25.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,175,148 - PTAB · Mar 4, 2025 · IPR2024-01181 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Rao and Scahill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“accessible to each of the plurality of executable applications, the API callable by each of the executable applications to request an execution time according to the corresponding network access policy controls for that application.” Ex. 1001, 107:41–45. Petitioner argues that Scahill teaches that limitation and that a person having ordinary skill in the art would have combined the teachings of Rao and Scahill with a reasonable expectation of success. Pet. 13–19, 24–27; see also Ex. 1003 ¶¶ 60–72, 81–85. After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that Scahill teaches that limitation and that a person having ordinary skill in the art would have combined the Rao and Scahill with a reasonable expectation of success. Our specific preliminary findings are set forth below.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have (1) held at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) had three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 3 (citing Ex. 1003 ¶¶ 24–26). Petitioner further argues that “[m]ore related education would compensate for fewer years of work experience (and vice versa).” Id. (citing Ex. 1003 ¶¶ 24–26). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is not disputed and consistent with the invention claimed in the ’700 patent.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms need to be expressly construed.” Pet. 4. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,749,700 - PTAB · Mar 4, 2025 · IPR2024-01180 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–16 were unpatentable, chiefly because Rao did not teach blocking network access.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “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). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have (1) held at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) had three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems.” Pet. 4 (citing Ex. 1003 ¶¶ 24–26). Petitioner further argues that “[m]ore related education would compensate for fewer years of work experience (and vice versa).” Id. (citing Ex. 1003 at ¶¶ 24–26). Patent Owner “does not challenge the Petition’s proposed definition.” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is not disputed and consistent with the invention claimed in the ’076 patent.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that the term “disallow[]” should be given the same construction the parties agreed upon during the district court proceeding. Prelim. Resp. 9. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Petitioner does not sufficiently explain where Rao teaches “allow[ing] or disallow[ing]” as recited in claim 1. See Pet. 13–18, 25–30. To the extent Petitioner and Dr. Bims cite to Rao, they reference paragraphs 191 through 193, which discuss how Rao’s filter 322 is used to implement prioritization. See Pet. 15; Ex. 1003 ¶ 65. More specifically, those paragraphs recite using prioritization to place the network packets in different queues based on their priority. See Ex. 1005 ¶¶ 191–193. We see nothing in Rao that teaches or suggest that the network packets would be disallowed, as opposed to simply delayed, based on priority. Id. And, as Patent Owner argues, this finding is consistent with factual findings made by a different panel considering the teachings of Rao in an inter partes review of a related patent. See Prelim. Resp. 16–18 (citing Samsung Elecs. Co v. Headwater Research LLC, IPR2023-01361, Paper 8 (PTAB Mar. 29, 2024) (Decision Denying Institution)). Even if one reads the Petition as arguing that a person having ordinary skill would have modified Rao to include Araujo’s blocking—which we do not—we would not be sufficiently persuaded by that argument. Although Petitioner explains why a person having ordinary skill in the art would want to consider power usage along with whether the application is in the foreground or background, Petitioner does not explain why a person having ordinary skill in the art would have changed prioritization to blocking. See Pet. 13–18. Indeed, such a modification appears to be one that would render Rao “inoperable for its intended purpose.” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,198,076 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Almondnet, Inc. And Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2024-00666 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the asserted combinations did not establish the required determination that access occurred during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. Patent Owner has not challenged the status of Baig as prior art. See PO Resp. Based on our review of the complete record, we find that Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Almondnet, Inc. And Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2024-00701 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the prior-art combinations did not establish a determination that devices accessed the Internet during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. Patent Owner has not challenged the status of Baig as prior art. See PO Resp. Based on our review of the complete record, we find that Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition. Q So is it your opinion that the – the limitation 1B requires that the system determines whether or not the accesses by the -- the two electronic devices occurred within a predetermined period of time? A Yes.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01281 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the cited combinations did not establish a determination that devices accessed the Internet during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we consider the level of ordinary skill in the pertinent art at critical time. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966). The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing 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 3 U.S. Pat. Pub. 2008/0113674 A1, published May 15, 2008 (Ex. 1003, “Baig”). 4 U.S. Pat. Pub. 2004/0128547 A1, published July 1, 2004 (Ex. 1006, “Laidlaw”). 5 U.S. Pat. No. 6,427,170 B1, issued July 30, 2002 (Ex. 1007, “Sitaraman”). 6 Harley Hahn, The Internet Complete Reference (2d ed. 1996) (Ex. 1008, “Hahn”). 7 U.S. Pat. No. 7,730,030 B1, issued June 1, 2010 (Ex. 1009, “Xu”). 8 U.S. Pat. Pub. 2006/0282328 A1, published Dec. 14, 2006 (Ex. 1010, “Gerace”). 1573, 1579 (Fed. Cir. 1995). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. 42.100(b) (2023). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner’s arguments. First, we agree with Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - PTAB · Feb 12, 2025 · IPR2024-01139 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–7, 9, and 14–51 on all petition grounds, finding a reasonable likelihood that the TML6–Fandrianto combination renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“presented art includes art listed on an Information Disclosure Statement (IDS) and “art made of record by the Examiner.” Id. at 7–8. Here, the Petition’s challenges are based on TML6 and Fandrianto. Pet. 2. TML6 is substantially the same as art previously presented to the Office because the ’469 patent discusses TML6. See, e.g., Ex. 1001, 8:43–53, 11:33–13:29. Fandrianto was made of record by the Examiner. Ex. 1002, 310; Ex. 1001, code (56). Thus, the first part of the framework is satisfied, and we must proceed to the second part.” slip op. at 13
- Skill levelOther
“We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 26. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,950,469
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.