- PTAB · Sep 23, 2025 · IPR2025-00270 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–13, 15, 18, 20, 21, and 27 on all asserted grounds, finding a reasonable likelihood that claim 13 is obvious over Rohall and Schiavone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art in May 2004 would have had a working knowledge of the telecommunications and networking art that is pertinent to the [’911 patent]. A POSITA would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or an equivalent, and two years of relevant experience involving computer science fundamentals, including pointers, data structures, object-oriented programming, database principles, internet-based communication technologies and electronic mail systems that is pertinent to the [’911 patent]. Lack of professional experience can be remedied by additional education, and vice versa Pet. 3 (citing Ex. 1003 ¶ 22). Patent Owner asserts a person of ordinary skill in the relevant art — computer science — would have at least a bachelor’s degree in electrical or computer science/engineering, or a related field, with at least two years of experience in the design or implementation of content management and analysis systems or a master[’s] degree in electrical or computer science/engineering, or a related field, with at least one year of experience in the design or implementation of content management and analysis systems. A higher level of education or skill can make up for less experience, and vice versa. Prelim. Resp. 17 (citing Ex. 2002 ¶ 14). For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. Petitioner’s proposed definition generally teachings of the ’911 patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). This definition is also supported by the testimony of Dr. Black.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“relational references” require using a relational model (or that they are a relational model) and, for purposes of this decision, we adopt Petitioner’s proffered construction. The relevant portion of claim 1 recites “a message container containing relational references pointing to a plurality of sent submessages stored externally to the message container in the message database.” Ex. 1001, 15:56–59. That express language does not recite a relational model, let alone that “relational references” connote required use of a relational model. Instead, the language supports Petitioner’s interpretation that “relational references” are pointers that point to related messages because the claim states that the “relational references” perform the task of “pointing to a plurality of sent submessages.” Although Patent Owner asserts that “pointers pointing” would be redundant (Prelim. Sur-reply 3), we disagree. In addition to being different parts of speech, i.e., a pointer is a noun and pointing is a verb defining what the noun is doing, the claim does not merely recite “relational references pointing.” Rather, Petitioner’s proposed construction outlines what the “relational references” include, i.e., “pointers,” and claim 1 further limits what the “relational references” are “pointing to,” i.e., “to a plurality of sent submessages.” Prelim. Resp. 9. Further, the Specification supports adopting Petitioner’s construction over Patent Owner’s. The Specification does not state that “relational references” require the use of, or are, a relational model, as Patent Owner argues. Rather, any discussion of “relational references” in the Specification describes them as message components that refer to content or other data, e.g., a pointer. Ex. 1001, 3:6–16 (“a message is a container having relational references to content and/or audit data”); see id. at 1:67–2:2, 4:61–64, slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with Petitioner that the ordinarily skilled artisan would have been motivated to combine Rohall and Schiavone because Schiavone provides reasons to apply its techniques to email systems such as Rohall’s. Schiavone describes a need for “ensuring compliance of e-mail messages with applicable standards and/or laws and/or otherwise determining appropriateness of a message for an intended recipient,” especially because there is “a patchwork of local, federal and international laws.” Ex. 1006 ¶ 6. Schiavone also states that filtering emails, e.g., to remove spam, is beneficial. Id. ¶¶ 1–2. As Schiavone describes problems in email systems, adequately shows that the ordinarily skilled artisan would have been motivated to combine Rohall and Schiavone. See KSR, 550 U.S. 401 (a reference which teaches, suggests, or motivates its combination may “identify a reason that would have prompted a person of ordinary skill in the art to combine the elements”).” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,073,911 - PTAB · Aug 13, 2025 · IPR2025-00430 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5–9, 13–15, 18, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Rose.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion as to Claim 1 For the reasons discussed above, and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that Petitioner shows a reasonable likelihood of prevailing in demonstrating that claim 1 would have been obvious over Rose. 3. Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Rose, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review”); 37 C.F.R. § 42.108(a).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed level of skill. Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition.” slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– 21. Moreover, the claims recite that the modules are stored in a computerreadable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - PTAB · Jun 10, 2025 · IPR2025-00299 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Kircher and Krug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this 6 The current record does not include allegations or evidence of objective indicia of nonobviousness. proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). However, the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Although the specification broadly defines “module,” the language of the claims better supports Patent Owner’s argument that the computer program module limitations connote structure in the form of software instructions or code. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 22–24; Ex. 2003 ¶¶ 15–28). Specifically, claim 1 recites a computer-readable storage medium storing computer program modules configured to execute on the computer processor, the computer program modules comprising. . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Ex. 1001, 47:30–32. And, claim 6 recites the computer-program product having a computer-readable storage medium having computer program instructions encoded thereon comprising . . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– readable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“That is, Petitioner asserts that the claim requires only one of “a local importance,” “a global importance,” “a content relevance,” or “one or more actions on the piece of electronic content.” Id. We adopt Petitioner’s construction, which Patent Owner does not dispute at this stage in the proceeding. See Prelim. Resp. The claimed determination is “based at least in part on one or more measures derived from the group” members listed. As such, the claim language is clear that only one member of the group, i.e., one of limitations 1[g][i]–1[g][iv], is required to meet the claim. Independent claims 6 and 7 recite similar limitations as claim 1, and for purposes of institution, we adopt Petitioner’s claim construction for those similar limitations. See Ex. 1001, 48:35–46, 49:1–11.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - PTAB · Jun 6, 2025 · IPR2024-01457 · APJ Stephen E Belisle · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Huang for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review as to all Challenged Claims of the ’194 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Considering the subject matter of the ’194 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 48), we apply the level of skill set forth above.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 13. Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Pet. 34; see Ex. 1005, Fig. 2. Based on the record before us, we find Petitioner sufficiently shows that Huang teaches or at least fairly suggests to the skilled artisan each of remaining limitations [1.1] through [1.6.2] for the reasons set forth by Petitioner, as outlined below with reference to annotated Figure 2.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,148,194 - PTAB · Jun 6, 2025 · IPR2024-01456 · APJ Amber L Hagy · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7–9, and 13–15 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable over the cited art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’579 patent. We institute review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not filed a preliminary response, and therefore Petitioner’s assessment is unchallenged at this stage. For purposes of this institution decision, and based on the present record including the disclosure in the ʼ579 patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 18). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ579 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 17. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. At this stage, and for purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed the arguments and evidence submitted by Petitioner. At this stage, and on this record, we determine that Petitioner has shown sufficiently for institution that the prior art teaches or suggests these limitations.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,450,579 - PTAB · Apr 7, 2025 · IPR2024-01361 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–16 and all petition grounds after finding a reasonable likelihood that claims 1, 2, and 9–12 are unpatentable over Kiani and Pelio.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’261 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Rosing, Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, including the use of renewable energy in powering datacenters, workload distribution amongst geographically distributed datacenters, and power management techniques for datacenters.” Pet. 15 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 15. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. For purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden at the institution stage “to identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). We determine that, at this point in the case and for purposes of institution, and based on the totality of the evidence to date, Petitioner has submitted sufficient evidence to establish a reasonable likelihood that Kiani was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In particular, the face of Kiani bears a copyright date of 2017, a publication date of May 2017, and a volume number in which it was published in an established journal (IEEE Communications Magazine). Ex. 1005; see also Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,283,261 - PTAB · Nov 21, 2024 · IPR2024-00914 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–10, 12, and 14–30 on all grounds, finding a reasonable likelihood of prevailing on the Pelio and Chapel obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’456 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, or more particularly, the use of renewable energy in powering datacenters and power management techniques for datacenters.” Pet. 14 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 14. For purposes of this Decision, we agree with Petitioner and determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sources, wherein such power distribution units were “a well-known aspect of datacenter design” (id. at 22–23 (citing Ex. 1005 ¶¶ 2, 19, 51, 79, 99; Ex. 1006 ¶¶ 27, 82; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1015, 3, 4; Ex. 1003 ¶¶ 61–62)); (4) “Pelio recognizes the variability of renewable sources resulting in times where there is insufficient power for computing operations,” and Chapel addresses that problem by teaching “monitoring and controlling power delivery to manage electrical power distribution within a datacenter based on the available power supply” (id. at 23 (citing Ex. 1005 ¶¶ 2, 37, 70, 106; Ex. 1006 ¶¶ 2, 47, 80–83, 90; Ex. 1003 ¶¶ 63–64)); (5) the ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Pelio and Chapel because their teachings are “compatible” and combining them “would have been predictable” and within the skillset of the ordinarily skilled artisan as it was “already known” in the art to collocate datacenters with “renewable generators” and to control a datacenter’s load “in response to a renewable source’s varying power supply” (id. at 24–25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1014, 6; Ex. 1015, 3, 4; Ex. 1016, 2; Ex. 1003 ¶ 65)); and (6) the Pelio-Chapel combination “would predictably result in Pelio’s datacenter containers including Chapel’s teachings for controlling power delivered to servers,” which “would advantageously enable Pelio’s datacenters to better follow the power supply and avoid grid electricity costs when the renewable supply cyclically dwindles,” thus combining “known elements” according to “known methods” to achieve “predictable results” (id. at 25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1003 ¶¶ 68–69)).” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,456 - PTAB · Sep 13, 2024 · IPR2024-00619 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR of claims 1–8 on all asserted grounds; the Board found compelling evidence that claims 1 and 6 would have been obvious over Yu and Acharya.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5, overall, favors exercising our discretion to deny institution of an inter partes review. The sixth Fintiv factor takes into account other circumstances that may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, if we determine that the other Fintiv factors favor discretionary denial, as we do here, we must also consider whether the Petition presents compelling merits. CommScope, Paper 23 at 5. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. Accordingly, we first discuss the merits of the Petition. We then discuss our conclusion that the merits are compelling.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be 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.” For the reasons that follow, we institute an inter partes review.” slip op. at 2
- BurdenOther
“we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“application on April 11, 2013. Ex. 1004, codes (22), (43). The ’383 patent issued on August 7, 2018, and the earliest claimed priority date for the ’383 patent is March 28, 2013. Ex. 1001, codes (45), (63), (30). Thus, Acharya qualifies as prior art under § 102(a)(2) because it was filed on October 5, 2011, and thus was “effectively filed before the effective filing date” of the ’383 patent. Despite the Petitioner’s citation to the wrong sub-part of section 102, we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,045,383 - PTAB · Feb 21, 2024 · IPR2023-01162 · APJ Amber L Hagy · IPR · Institution
Instituted IPR of claims 1–22 on all asserted grounds; the Board found a reasonable likelihood that Flick ’885 combined with Flick ’561 renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, we note that, under some circumstances, § 325(d) may provide a basis for discretionary denial based on prior art and arguments presented in a previous inter partes review.5 Although the Becton Dickinson factors are focused on the question of whether the same or substantially the same art or arguments were previously presented during initial examination of the challenged patent,6 Advanced Bionics explains that these factors “more broadly provide guidance as to whether the art presented in the petition is the ‘same or substantially the same’ as the prior art previously presented to the 5 See, e.g., Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper 8 at 5–7 (PTAB Sept. 11, 2014) (informative) (exercising discretion under section 325(d) to deny institution of third petition filed by same petitioner that raised same prior art as a petition for which review was already denied); Unified Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-0072, Paper 13 at 7–9 (PTAB July 24, 2014) (informative) (exercising discretion under section 325(d) to deny institution where petition challenged overlapping claims, over same prior art, as presented in two prior petitions, one of which had progressed to a final written decision). 6 Becton Dickinson involved prior art references that had previously been considered by the Examiner during prosecution. See Becton Dickinson, Paper 8 at 18 (“Woehr, relied upon by Petitioner as the base reference here, was also the base reference in the Examiner’s Woehr/Rogers obviousness rejection during examination.”). Thus, in Becton Dickinson, the Board weighed “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Id. at 17. Office during any proceeding, including prior AIA proceedings.” Advanced Bionics, Paper 6, at 9–10. Nevertheless, Advanced Bionics counsels that the existence of a co- pending review of a patent over the same or similar prior art may not be sufficient to warrant denial. “At bottom,” noted the panel in Advanced Bionics, the two-part framework utilized for 35 U.S.C. § 325(d) “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9 (emphasis added). Although the art in the 504 IPR at least overlaps with the art presented here, that art has not yet been fully considered or evaluated. There has been no final determination in that proceeding as to the scope of the prior art nor any final determination as to whether the submitted evidence is sufficient to show that any claims of the ’278 patent are unpatentable. As such, there is no reference point under the Advanced Bionics framework to determine whether the Office erred; there has simply been no final determination to analyze or reconsider. Accordingly, under the facts before us, we conclude that the preliminary consideration by the Board in the 504 IPR, determining to institute a trial based on a petition filed by an unrelated petitioner,7 is not a” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be 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.” If the Board institutes trial, it “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); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’278 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–22) of the ’278 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Eskandarian, Petitioner contends that an ordinarily skilled artisan for the ’278 patent “would have been someone knowledgeable in mobile computing systems and location technology.” Pet. 18 (citing Ex. 1002 ¶ 39). Petitioner additionally contends [t]hat person would have had either (1) a Bachelor of Science degree in Electrical Engineering, Mechanical Engineering, Automotive Engineering, Computer Engineering, or an equivalent field, with at least two years of academic or industry experience in the automotive industry; or (2) a Master of Science degree in Electrical Engineering, Mechanical Engineering, Automotive Engineering, Computer Engineering, or an equivalent field, with at least a year of academic or industry experience in the same field. Id. (citing Ex. 1002 ¶ 40). Petitioner also states that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education.” Id. at 19 (citing Ex. 1002 ¶ 40).” slip op. at 23
- Prior constructionPrior construction adoptedDecided for patent owner
“We see no reason, at this stage of the proceeding, to depart from the Board’s previous construction of this term in Omega Patents I and adopted by the Board in the 504 IPR. The Board’s previous construction is soundly premised on the written description of the ’278 patent, in accordance with Phillips. See 504 IPR DI, 415 F.3d at 12 (citing Phillips, 415 F.3d at 1315 (noting that the specification is the single best guide to the meaning of a disputed term)). As the Board noted in the 504 IPR DI, the ’278 patent describes “enabling data” as data that “may be the vehicle device code or codes, an instruction to select a code or codes from among those already stored, or the data or sequence to allow the controller 111 to generate the vehicle device code or codes, for example.” 504 IPR DI at 25 (quoting Ex. 1001, 24:8–13). This supports the Board’s construction of “enabling data” as data that “enables the recited controller to use a particular vehicle device code from among plural such codes for different vehicles by providing either (1) the code itself to the controller, or (2) data that otherwise enables the controller to select or generate the code.” Omega Patents I (Ex. 2005) at 12–13 (citing Ex. 1001, 24:5–25:28, Figs. 10–13). We adopt this construction for purposes of this decision herein. In so doing, we note that our construction is preliminary, and we advise the parties (as we did in the 504 IPR) that “[t]he parties may further develop the record at trial as to how an ordinarily skilled artisan, at the time of the invention, would have interpreted ‘enabling data’ in light of the written description of the ’278 patent, and more clearly explain any relevant differences between their respective interpretations.” 504 IPR DI at 27.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,032,278 - PTAB · Oct 11, 2023 · IPR2023-00621 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. at 6. The Director has issued additional guidance on the application of in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Fintiv Memo”). Additionally, we are guided by the precedential decisions of the Director in OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022) (precedential), and CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (Feb. 27, 2023) (precedential) (“CommScope”). We are instructed to consider compelling merits under Fintiv factor six only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Thus, we begin by considering the first five Fintiv factors.2” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner states: In the Lenovo ’083 IPR, the Board found 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 corresponding industry work experience.” Prelim. Resp. 12–13 (citing Ex. 1012,4 8). Patent Owner agrees with this standard and argues that it is the same as the standard Petitioner proposes. Id. at 13. We agree that there appear to be no significant differences. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same preliminary determinations under Petitioner’s formulation of the level of skill.” slip op. at 17
- BurdenDecided for petitioner
“It is undisputed that the Petition states that “[a]ll claim terms should be construed according to the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100.” Pet. 2. Standing alone, there is no dispute that the Petition uses the correct claim construction standard in the analysis. It only becomes a question because Petitioner’s declarant (Dr. Schmidt) employs the phrase “broadest reasonable construction in light of the specification of the patent in which it appears” in describing his “understand[ing]” of the claim construction standard. Ex. 1003 ¶ 26. If Dr. Schmidt’s “understand[ing]” of the claim construction standard was that BRI should be used, then it was incorrect. The claim construction standard for claims of challenged unexpired patents in this forum was changed from BRI to the Phillips standard in 2018, long before Dr. Schmidt signed the Declaration (Feb. 22, 2023). See “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,” 83 Fed. Reg. 51340, 51340–51359, 51343 (October 11, 2018) (“This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.”); 37 C.F.R. § 42.100(b). But the Petition articulates, unequivocally, the correct claim construction standard and goes into some detail in explaining what the Phillips standard entails. Pet. 2–5 (citing Ex. 1003 ¶¶ 28–29). Although” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,020,083
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.