- 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 - Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - 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 - PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution
The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,215,039 - PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; 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))). slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,266,028 - 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.