- PTAB · Sep 30, 2025 · IPR2025-00618 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 8, 12–15, 18, and 19 on both § 103 grounds, finding a reasonable likelihood that at least one claim under each ground is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’823 patent. We institute inter partes review as to all the challenged claims of the ’823 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSITA) “would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field.” Pet. 12 (citing Ex. 1003 ¶ 58). Petitioner further argues that “[a]dditional experience might substitute for less education and vice versa” and that “POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and techniques.” Id. Patent Owner “does not contest Petitioner’s proposed definition” of a POSITA at this stage of the proceeding. Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’823 patent and the cited prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“given its plain and ordinary meaning in this proceeding, and that no specific claim construction of any claim term is required.” Pet. 10. Petitioner explains that the parties have proposed “different constructions for various claim terms pending in the Related Litigation” but that the Grounds “render the claims unpatentable under either party’s construction, and any reasonable construction, and thus the Board need not construe any term.” Id. at 10–11 (citing Ex. 1003 ¶ 367; Ex. 1070; Ex. 1071).2 Patent Owner does not expressly address claim construction in its Preliminary Response. We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“E. Combination of Vasell, Alves, Rellermeyer, and Hall As explained above, Petitioner contends that the technical implementation details that were intended to implement Vasell’s teachings are described in Alves, Rellermeyer, and Hall. Pet. 36. Petitioner argues, therefore, that the motivation to modify Vasell to include features described in the other references is demonstrated by the references themselves. Id. at 36–37 (citing Ex. 1003 ¶¶ 375–376). For example, according to Petitioner, a POSITA would have been motivated to modify Vasell with Alves’ teaching of a centralized application repository for storing its distributed applications to provide increased scalability. Id. at 38, 39 (citing Ex. 1008, 263, 266; Ex. 1003 ¶¶ 378–379). Petitioner contends that a POSITA would have been motivated to modify Vasell with Rellermeyer’s management software to provide for load balancing, failover and elastic scalability. Id. at 38 (citing Ex. 1003 ¶ 380). Finally, Petitioner argues that a POSITA would have been motivated to modify Vasell with Hall’s management software that requires digital signatures for distributed applications to provide increased security for using third party applications. Id. at 38, 39 (citing Ex. 1003 ¶ 381). Patent Owner does not separately dispute Petitioner’s contention that a POSITA would have been motivated to combine Vasell, Alves, Rellermeyer, and Hall. to combine the prior art references and determine that Petitioner has established a reasonable likelihood that a person of ordinary skill in the art would have combined Vasell, Alves, Rellermeyer, and Hall with a reasonable expectation of success for the reasons provided by Petitioner.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,695,823 - Microsoft Corporation v. Edge Networking Systems, LLCInstitution deniedPTAB · Sep 30, 2025 · IPR2025-00619 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 1, 2, 4–7, and 9 obvious over Vasell, Alves, Hall, and Rellermeyer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[Persons of ordinary skill in the art (“POSITAs”)] as of June 2013 would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field. Additional experience might substitute for less education and vice versa. To that end, POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and familiar with operating/distributed systems and security and privacy techniques. Pet. 15 (citing Ex. 1003 ¶ 58).4 Patent Owner does not contest this in its Preliminary Response. Prelim. Resp. 36–37. We apply Petitioner’s definition of the level of ordinary skill in the art here.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner has not sufficiently explained how the combination of Vasell, Alves, Hall, and Rellermeyer teaches or suggests a programmable network device and a programmable cloud device that are each “powered by a sandboxing operating system,” as required by all challenged claims. Our reasoning follows.” slip op. at 10
§ 103 obviousnessPatents in suitUS 10,686,871 - Microsoft Corporation v. Edge Networking Systems, LLCInstitution deniedPTAB · Sep 30, 2025 · IPR2025-00617 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 1, 2, 6–8, 10–13, and 15 obvious over Vasell, Alves, Hall, and Rellermeyer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[Persons of ordinary skill in the art (“POSITAs”)] as of June 2013 would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field. Additional experience might substitute for less education and vice versa. To that end, POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and familiar with operating/distributed systems and security and privacy techniques. Pet. 14 (citing Ex. 1003 ¶ 59).4 Patent Owner does not contest this in its Preliminary Response. Prelim. Resp. 39. We apply Petitioner’s definition of the level of ordinary skill in the art here. 2 Congress amended § 103 when it passed the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112–29, § 3(c), 125 Stat. 284, 287 (2011). Petitioner asserts that the version amended by the AIA applies here. Pet. 23. 3 We use Petitioner’s nomenclature in which Petitioner collectively refers to the Vasell patent (Ex. 1004) and its corresponding provisional applications (Exs. 1015, 1016) as “Vasell.” 4 Erez Zadok, Ph.D. submitted a declaration on behalf of Petitioner. See Ex. 1003.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner has not sufficiently explained how the combination of Vasell, Alves, Hall, and Rellermeyer teaches or suggests a programmable network device and a programmable cloud device that are each “powered by a sandboxing operating system,” as required by all challenged claims. Our reasoning follows.” slip op. at 10
- BurdenNot shown unpatentable
“Petitioner has not sufficiently explained how the combination of Vasell, Alves, Hall, and Rellermeyer teaches or suggests a programmable network device and a programmable cloud device that are each “powered by a sandboxing operating system,” as required by all challenged claims. Our reasoning follows.” slip op. at 10
§ 103 obviousnessPatents in suitUS 10,893,095 - Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedAll claims unpatentablePTAB · Jun 5, 2024 · IPR2021-00237 · APJ Iftikhar Ahmed · IPR · Remand
Claims 1–12 are unpatentable as obvious over Wiltshire and Saha, with Chen or PC Magazine additionally applied to the specified dependent claims.
RulingsRemand decision- RemandOther
“Petitioner filed a Notice of Appeal of the Final Written Decision with the Federal Circuit. See Paper 39. On October 13, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Sony, 2023 WL 6773879. The Federal Circuit found that our determination that Petitioner’s asserted reference Wiltshire does not disclose the “generating” limitation of claims 1 and 8 was not supported by substantial evidence. Id. at *2–4. The Court vacated our Final Written Decision and remanded for further proceedings consistent with the Court’s opinion. Id. at *5. After the Federal Circuit issued its mandate, we asked the parties to propose a procedure on remand. Ex. 3001, 2. The parties proposed an agreed-upon procedure to allow post-remand briefing with no additional evidence or expert declarations. Id. at 1. We issued an Order authorizing each party to file opening and responsive briefs. Paper 43. The parties then filed the following briefs: Petitioner’s Opening Brief Pursuant to Paper No. 43 (Paper 47, “Pet. Remand Br.”), Patent Owner’s Opening Brief on Remand (Paper 46, “PO Remand Br.”), Petitioner’s Response Brief Pursuant” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“6773879, at *4. The Federal Circuit concluded that was improper. As the Court explained, “the existence of those examples does not exclude other examples where new images are created,” and “[a]lthough both parties agree[d] the game Doom requires creating new images, [we incorrectly] determined that listing Doom in the specification was not a sufficient disclosure.” Id. Contrary to Patent Owner’s assertion, the logical conclusion from the Federal Circuit’s reasoning is that our finding that Wiltshire is silent as to the content of that compressed MPEG stream has now been rejected. We must “credit[] Wiltshire’s disclosure of applying its system to video games like Doom, which require ‘generating’ new images.” Id. Based on that reading of Wiltshire, Petitioner persuasively shows that the combination of Wiltshire and Saha teaches compressing those new images using MPEG and transmitting those as compressed frames. Dr. Fuchs testifies that a person of ordinary skill in the art would have understood from Wiltshire’s disclosure that “if the image is displayed or updated, it is then sent to the client in the form of a ‘video stream,” and that “[t]ransmitting the updated images as a video stream allows Wiltshire’s system to be used with the wide variety of games it contemplates, including arcade games (like Doom) that continually update images on the screen.” Ex. 1033 ¶ 46; see also id. ¶ 49 (“The video stream must be dynamically generated because Wiltshire system must be capable of playing real-time interactive games like Doom.”); Pet. Reply 13–16. We find Dr. Fuchs’s testimony persuasive and consistent with the Court’s guidance as to Wiltshire’s disclosure.” slip op. at 48
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“objection to excluding Exhibit 1024 from the record. Id. Accordingly, Patent Owner’s motion to exclude as to Exhibit 1024 is granted.” slip op. at 89
Patent outcomesUS 10,681,109 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,681,109 - Go1 Pty, Ltd. v. Opensesame, Inc.No claims unpatentablePTAB · Feb 26, 2024 · IPR2022-01439 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1–16 were not shown unpatentable because Petitioner failed to establish that the prior art taught or rendered obvious the required post-verification provision of a location designator.
RulingsFinal written decision- BurdenNot shown unpatentable
“that includes a URL pointing to the media server to access the content. Ex. 1006 ¶¶ 77–82. However, that URL is placed in the redirector file before the web server compares authorization tickets to determine whether the user is licensed to the requested content. Id. ¶¶ 77–84; Ex. 2002 ¶¶ 107– 124. According to Madison, a redirector file is generated first, sent back to the user, and then when the user uses the redirector file to access the content, the media server determines whether or not to grant the end user access to the request. Ex. 1006 Fig. 5, ¶¶ 77–84. It is this last step of determining whether to grant access that Petitioner relies on for teaching the “verifying a validity status of the user license” limitation of claim 1. Pet. 41–43. Thus, Madison does not disclose “upon verifying the validity of the license,” causing a licensing server “to provide to a proxy a location designator” for accessing the content player. See Ex. 2002 ¶¶ 115–120, 123–124.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“licensing/reporting server.” Ex. 1002 ¶ 136. Dr. Almeroth then points to the URL link in the redirector file and states that the user device in Madison uses the URL in the redirector file to direct the user device to the media server. Id. Neither of these statements address the requirement in the claim that, “upon verifying the validity of the license,” the instructions are configured to “cause the licensing/reporting server to provide to the proxy” the URL. Dr. Almeroth then testifies that a person of ordinary skill in the art “would have understood that, in the combined system, the content would be accessed via Sperle’s content player 208, such that the reference to the media server in the ASX URLs would point to the network location of Sperle’s content player 208.” Id. This statement addresses only the last portion of the claim limitation. Thus, the Petition and supporting evidence (Dr. Almeroth’s declaration testimony) do not address the entirety of the location designator claim limitation. On reply, Petitioner relies on additional testimony from Dr. Almeroth. Pet. Reply 13 (citing Ex. 1024 ¶¶ 90–91). Dr. Almeroth opines that “[t]here is no practical difference between the request for streaming media content, in combination with an authorization ticket that is provided back to the network for verification; and ‘request[ing] verification . . . of the validity status of a license to the specific instance of content.’” Ex. 1024 ¶ 90. According to Dr. Almeroth, a person of ordinary skill in the art “would view them as insubstantially different, if at all, and would still be motivated to combine Sperle and Madison.” Id. Dr. Almeroth adds that “there is no reason why the combination would not be an obvious design choice.” Id. Dr. Almeroth also testifies that “there is no clear significance to the fact that the ‘steps in Madison’ are in ‘reverse order compared to the claim element’” and that a skilled artisan “would view them as insubstantially different, if different at all, and would still be motivated to combine Sperle and Madison.” Id. ¶ 91. Dr. Almeroth’s testimony does not persuasively show why a person of ordinary skill in the art—considering the teachings of Sperle and Madison— would have performed the redirector file creation and authorization differently from what Madison teaches such that, upon determining that the user was authorized, the URL is provided from the licensing server to the proxy, as required by the claim. Petitioner relies on Madison’s disclosures regarding the redirector file for teaching other elements of the claim—the proxy and the verifying of the validity status of the user license—yet fails to provide a persuasive analysis for why a skilled artisan would go beyond what is taught in Madison and provide the URL to the proxy “upon verifying the validity of the license” rather than prior to that verification. Dr. Almeroth does not point to design considerations at the time of the invention to show why the differences between the art and claimed invention are “insubstantially different” or that the modification would merely be a “design choice.” Ex. 1024 ¶¶ 90–91. Rather, Dr. Almeroth provides conclusory testimony that is not supported by any evidence contemporaneous with the claimed invention. In fact, Dr. Almeroth does not provide any technical explanation for his generic conclusions. The evidence of record is simply insufficient for us to conclude that an ordinarily skilled artisan would have come up with the claimed invention in view of the teachings of Sperle and Madison.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“for delivering educational content over networks such as the Internet, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing, e.g., Ex. 1002 ¶ 41). Patent Owner states that it “generally agrees with Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 10. Patent Owner adds that “the level of ordinary skill in the art is more often premised not upon obtaining a formal degree in computer engineering, computer science, etc., but through years of hands-on experience in the field, often coupled with formal coursework that may or may not lead to a degree in the enumerated fields.” Id. at 11 (citing, e.g., Ex. 2002 ¶ 18). We determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art, and we therefore adopt that level.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express constructions for any claim terms. See Pet. 8 (“To resolve the particular grounds presented in this Petition, Petitioner does not believe that any term requires explicit construction.”); PO Resp. 11 (“Patent Owner believes that the patent claims at issue can be interpreted without the need for the formal construction of any claim terms.”). We determine that no claim terms require express construction in order to analyze the patentability issues presented.” slip op. at 11
Patent outcomesUS 8,784,113 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,784,113 - Apple Inc. v. MPH Technologies OYNo claims unpatentablePTAB · May 11, 2023 · IPR2019-00819 · APJ John D Hamann · IPR · Remand
On remand, claims 4–6 were not shown unpatentable because the asserted grounds did not address claim 3’s reply-message limitation, and the alternative ACK theory lacked persuasive support.
RulingsRemand decision- Adverse judgmentAdverse judgmentOther
“Patent Owner filed a statutory disclaimer under 37 C.F.R. § 1.321, which states that Patent Owner “hereby disclaims and dedicates to the public the entirety of claims 1–3 of the ’810 Patent.” Ex. 3003, 1; Paper 50. Accordingly, claims 1–3 are no longer part of this proceeding. And for the reasons that follow, we determine that Petitioner does not show by a preponderance of the evidence that claims 4–6 are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’810 patent as one who “would have had a B.S. degree in Computer Engineering, Electrical Engineering, or an equivalent field, as well as at least 3–5 years of academic or industry experience in the Internet security industry.” Pet. 12 (citing Ex. 1002 ¶¶ 20–21). We maintained this definition in our prior Final Written Decision. FWD 9. Patent Owner did not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’810 patent. See generally PO Resp. Petitioner’s definition of the level of skill in the art is consistent with the ’810 patent and the asserted prior art, and we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not submit any terms for construction. Pet. 12 (arguing that “[a]ll claim terms of the ’810 patent should receive their ordinary and customary meaning”). Patent Owner submits the term “security gateway” for construction, and argues that its meaning is in dispute. PO Resp. 11–24. Our below analysis of Petitioner’s unpatentability arguments for claims 4–6, however, does not implicate this claim term. See supra Section V.C. Thus, we do not provide an express construction for “security gateway.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). In addition, we note that the Federal Circuit corrected our construction of “the request message and/or a reply message being encrypted,” as recited in claim 1 of the ’810 patent. Apple, 2022 WL 4103286, at *4–6; see supra Section I.G. This limitation, however, is not implicated in our analysis of the parties’ arguments concerning unpatentability of claims 4–6—the claims on remand that remain after Patent Owner’s statutory disclaimer.” slip op. at 13
- BurdenNot shown unpatentable
“The Petition guides the proceeding. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1335–36 (Fed. Cir. 2020). The Federal Circuit explained that “Congress chose to structure a process in which it’s the petitioner . . . who gets to define the contours of the proceeding,” and that “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’” Id. at 1335 (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (quoting 35 U.S.C. § 312(a)(3))) (emphasis added). “Although the Board is not limited by the exact language of the petition, . . . the Board does not ‘enjoy[] a license to depart from the petition and institute a different inter partes review of his own design.’” Id. at 1336 (quoting SAS, 138 S. Ct. at 1356) (citing Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018)). Here, the Petition alleges that claims 4 and 5 are obvious in view of Ishiyama and Murakawa, and claim 6 is obvious in view of Ishiyama, Murakawa, and Forslöw. Pet. 4, 54–59, 66–69. In other words, these combinations are “the grounds on which the challenge to [these] . . . claim[s] is based.’” Koninklijke Philips, 948 F.3d at 1335. In view of how the Petition is worded and the analysis provided for claims 4–6, we do not consider one of the challenged grounds to be whether claims 4 and 5 would have been obvious in view of Ishiyama, Murakawa, and Ahonen, and likewise Ishiyama, Murakawa, Forslöw, and Ahonen for claim 6.” slip op. at 20
Patent outcomesUS 7,620,810 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,620,810 - Go1 Pty, Ltd. v. Opensesame, Inc.InstitutedPTAB · Feb 27, 2023 · IPR2022-01439 · APJ Stacy B Margolies · IPR · Institution
The Board instituted IPR on all challenged claims, 1–16, finding a reasonable likelihood they are unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any 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); see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary Response, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’113 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner states that it “generally agrees with Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 11. Patent Owner adds that “the level of ordinary skill in the art is more often premised not upon obtaining a formal degree in computer engineering, computer science, etc., but through years of hands-on experience in the field, often coupled with formal coursework that may or may not lead to a degree in the enumerated fields.” Id. (citing, e.g., Ex. 2001 ¶ 49). We determine on the current record that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art, and we therefore adopt that level for the purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express constructions for any claim terms. See Pet. 8 (“To resolve the particular grounds presented in this Petition, Petitioner does not believe that any term requires explicit construction.”); Prelim. Resp. 11 (“Patent Owner believes that the patent claims at issue can be interpreted without the need for the formal construction of any claim terms.”). We determine that no claim terms require express construction in order to determine whether to institute inter partes review.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner sufficiently shows that, in implementing Sperle’s teachings, a person of ordinary skill in the art would have considered Madison, given its disclosure of a similar system architecture and similar goals and benefits. Pet. 16–18; Ex. 1002 ¶¶ 76–83. Petitioner also sufficiently shows that an ordinarily skilled artisan would have been motivated to combine Madison’s teachings with Sperle’s teachings to provide improved access to content, improved authorization of users, an improved licensing system, and robust reporting. Ex. 1006 ¶ 6 (explaining as background that “a need exists for an improved system and method for controlling access to digital content, particularly streaming media content, and authorizing end users”); Ex. 1005 ¶ 11 (disclosing that “learning management system 140 often offers robust reporting capabilities”); Ex. 1002 ¶ 82. Petitioner also sufficiently shows that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the basic e-learning teachings of Sperle with the controlled content delivery system taught by Madison. Pet. 20–21; Ex. 1002 ¶¶ 83–86. Such a combination would have included (i) applying the access and license control software teachings of Madison to Sperle’s teachings regarding reporting module 214; and (ii) adding the browser-based content-accessing features of Madison into the similar browser-based user systems of Sperle. Pet. 20–21; Ex. 1002 ¶¶ 83–84. An ordinarily skilled artisan would have had a reasonable expectation of success because Sperle and Madison purport to solve controlled e-learning content delivery systems in similar ways and propose solutions using the same type of hardware and software with similar functionalities. Pet. 20–21; Ex. 1002 ¶¶ 85–86.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,784,113 - PTAB · Dec 9, 2022 · IPR2022-01141 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood of prevailing on claims 1–18 under the Rosing and Shaprio anticipation grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, as well as all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. We institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a related field and have three or more years of experience in the field.” Pet. 6 (citing Ex. 1016 ¶¶ 34–39). For purposes of this Decision, we adopt Petitioner’s proposal, with the exception of the open-ended language “or more,” as reasonable and consistent with the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms the intrinsic evidence. See id. at 1317–19. Petitioner proposes construction of the term “linear acceleration of the subject” as “acceleration that does not include acceleration due to gravity.” Pet. 4–6. We do not find construction of this term or any other term necessary at this time. See 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 9
Claim constructioncites PhillipsPatents in suitUS 9,922,522 - PTAB · Dec 9, 2022 · IPR2022-01139 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, as well as all supporting evidence, we determine that Petitioner shows a reasonable likelihood that at least one of the challenged claims is unpatentable. We institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a related field and have three or more years of experience in the field.” Pet. 8 (citing Ex. 1017 ¶¶ 32–37). For purposes of this Decision, we adopt Petitioner’s proposal, with the exception of the open-ended language “or more,” as reasonable and consistent with the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes construction of the term “linear acceleration of the subject” as “acceleration that does not include acceleration due to gravity.” Pet. 6–8. We do not find construction of this term or any other term necessary at this time. See 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” slip op. at 9
Claim constructionPatents in suitUS 9,924,314 - Vmware, Inc. v. Cirba Inc.All claims unpatentablePTAB · Dec 7, 2022 · PGR2021-00098 · APJ Russell E Cass · PGR · Final written decision
Claims 1–63 are unpatentable under § 112(a) because the patent lacks written-description support for the claimed “already placed” and “issue instructions” limitations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pet. 20–54. With its Petition, Petitioner submitted the Declaration of Dr. Erik Zadok. Ex. 1006. Patent Owner elected to waive its Preliminary Response. Paper 11. We instituted trial on all grounds of unpatentability. (Paper 12 (“Inst. Dec.”)).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“term “placing” requires more than a theoretical placing or planning to place as part of an analytical solution. Turning first to the claim language, we agree with Petitioner that the language of the independent claims is consistent with “placement” occurring after and separately from the analytical evaluation process. See Pet. Reply 3. For example, claim 1 is directed to a system for “determining placement of source computer systems on target systems,” the system configured to “determine a placement” by employing operations to “evaluate compatibility.” Ex. 1001, 40:2–4, 40:8– 36. The second “evaluate compatibility” operation is “to determine if the specific source system can be placed with those other source systems on the specific target system,” which suggests that what is being evaluated is whether the source system can be actually placed (e.g., moved or transferred) to the target system. Id. at 40:18–27 (emphasis added). Similarly, the third “evaluate compatibility” operation involves “evaluating the impact on resource utilization of the specific target system of placing the specific source system on the specific target system,” which suggests that what is being evaluated is the impact on resource utilization once the source system is actually moved or transferred to the target. Id. at 40:28–32 (emphasis added). Additionally, the claim states that, based on the “evaluate” operations, the claimed system “determine[s]” a placement, not that it executes the placement. Id. at 40:8–11. The actual placement seemingly occurs after the final claimed operation of “issu[ing] instructions to place” the source system(s) on to the target system “in accordance with the determined placement.” Id. at 40:37–39. Independent claims 32 and 63 include similar language. Id. at 42:36–43:3, 45:1–46:19. Had the patent applicant wanted to cover systems that were merely “hypothetically placed,” language to that effect could have been added to the claim.” slip op. at 19
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“As noted above, the claim language requires evaluating compatibility between a specific source system and one or more other source systems “already placed” on the target system. Paragraph 82 does not disclose the evaluation of compatibility of a source system and another source system as part of the “forward consolidation.” Additionally, paragraph 82 does not disclose that “existing target systems 16” have source systems “already placed” on them. Thus, paragraph 82 does not provide the level of detail recited in the limitation under either party’s definition of “placed.” In addition, as noted above, we have interpreted “placed” to require an actual placement rather than merely “planning to place” or a theoretical placement. See § II.A.2, supra. Therefore, even if the “existing target system 16” had theoretical or hypothetical systems added to it as part of the consolidation analysis, those would not be systems that are “already placed” on the target system.” slip op. at 34
Patent outcomesUS 10,951,459 unpatentableClaim construction§ 112 disclosurePatents in suitUS 10,951,459
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.