• Motorola Solutions, Inc. v. Stellar, LLCInstituted
  PTAB · Mar 18, 2025 · IPR2024-01314 · APJ Brian J Mcnamara · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one obviousness challenge.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “February 24, 2025, the District Court ordered all deadlines and hearings stayed pending further order of the court. See Ex. 1066. The District Court’s order notes that Patent Owner asserts 8 patents in the litigation, that IPRs have been instituted on 4 of those patents covering 10 of the 14 claims asserted in the litigation, and that further consideration of a stay will depend upon whether IPRs are instituted on patents including the 4 remaining claims. Id. at 1, 3. The District Court also ordered the parties to update their positions on a stay within one week of a decision on institution. It is unclear if, and when, a new trial date would be set. Thus, factors 1 and 2 weigh against exercising discretion to deny institution. The subject matter of the challenged claims is closely related to the subject matter of the claims of the patents in the previously instituted IPRs and the remaining pending petitions, as evidenced by the overlap of the asserted references and arguments advanced in these cases. As detailed in the substantive sections of this Decision, the Petition meets the standard for institution, i.e., there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the Petition. Under Fintiv factor 6, these circumstances weigh against exercising discretion to deny institution. In view of these circumstances, we determine that factors 1, 2, and 6 strongly weigh against exercising discretion to deny institution.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinarily skilled artisan”) as having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology. Pet. 7 (citing Ex. 1062, Sarhan Decl. ¶¶ 26–30). Petitioner adds that additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. Id. Patent Owner does not comment specifically on the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of an 4U.S. Patent Publication No. 2004/0008255 A1 (Ex. 1019) 5 U.S. Patent Publication No. 2002/0191952 A1 (Ex. 1009) 6 U.S. Patent 5,982,418 (Ex. 1020) 7 Another Declaration of Dr. Sarhan has also been made of record in this proceeding. See Ex. 1003. This Decision distinguishes references to the Sarhan Declarations by Exhibit number. ’910 patent and the references, we apply it for purposes of this Decision. slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “A. A computer processor configured to Petitioner notes that in the parallel litigation Patent Owner contends that this term is not a means plus function limitation. Pet. 9. Petitioner states that for purposes of the petition it has applied means plus function and non-means plus function interpretations to this limitation. Id. For purposes of this Decision, we need not construe this claim limitation. B. File In this proceeding, Petitioner does not propose a construction of the term “file.” See Pet. 9. Patent Owner does not propose a construction of “file” but, nonetheless, states that “Petitioner’s vague and unduly broad definition of ‘file’ is not only contradicted by the prosecution history, but also the extrinsic evidence it relies upon.” Prelim. Resp. 5 (citing Pet. 10– 12). Patent Owner reserves the right to present claim constructions arguments if trial is instituted. Id. at 6. For purposes of this Decision, we address the meaning of “file” in the context of the parties’ substantive arguments and do not articulate a specific construction. 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 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “c) Claim 1 Analysis Petitioner has demonstrated that, contrary to Patent Owner’s arguments, Yerazunis discloses write protecting a segment of the buffer. Yerazunis explicitly states that “[upon] a firing event, specified frame data associated with that firing event both before and after the event is preserved and cannot be overwritten as a result of further use of the gun or subsequent of memory to a second portion of memory to avoid overwriting the data in the first portion of memory upon the occurrence of a second trigger event is an effective approach to designating the first portion of memory as write protected. As Petitioner points out, an ordinarily skilled artisan would have understood from Yerazunis that retrieving video data for gun firing events necessitates the ability to locate the relevant video data within the buffer and that using pointers in a table to index the data allows for its later retrieval. Pet. 25 (citing Ex. 1062, Sarhan Decl. ¶ 372). We find unavailing Patent Owner’s argument that Yerazunis’ disclosure of a purge button to erase the contents of the circular buffer is further evidence that that entire buffer contents is protected and unprotected as a whole. Prelim. Resp. 30 (citing Ex. 1017, 9:47–51). It is unclear how providing an “optional” purge feature that erases the contents of the circular buffer and captured still images a “user does not desire to retain” supports Patent Owner’s argument that Yerazunis does not disclose write protecting segments of the buffer associated with a trigger event. Ex. 1017, 9:49–53. Inclusion of this feature further supports Petitioner’s argument, as the segments of a circular buffer associated with an event are not overwritten, unless the user invokes the purge feature to erase the contents of the circular buffer. Also unavailing is Patent Owner’s argument that video data preservation in Yerazunis “is a step that occurs after, not as part of, the step of ‘continu[ing] to record for a brief interval.’” See Prelim. Resp. 30–31. Claim 1 is an apparatus claim and does not recite “continuing to record for a brief interval.” See Ex. 1060, 12:19–47 (claim 1). Claim 1 recites “a computer processor configured to . . . continuing to record the sensor data in designated for saving.” Ex. 1060, 12:22, 34–36. Yerazunis discloses that upon detection of a trigger event a predetermined number of frames, e.g., 2 frames, are stored in successive frame locations within the circular buffer. Ex. 1017, 8:26–32; 12:14–28. Yerazunis further discloses that “any desired percentage of frames may be captured prior to or after the trigger event by specifying how many frames are to be captured and stored after the trigger event.” Id. at 8:39–42.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,965,910
• Silicon Motion Inc. v. K.Mizra, LLCInstituted
  PTAB · Mar 5, 2025 · IPR2024-01241 · APJ Aaron W Moore · IPR · Institution

  The Board instituted IPR of claims 1–2 and 4–15 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2, 4–7, and 9–15 are obvious over Johnson or Stubbs.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below, and based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. B.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and 2-3 years of experience in memory system design,” or, alternatively, “a Master’s degree in one of those fields and 1-2 years of relevant experience.” Pet. 9 (citing Ex. 1003 ¶¶ 26–29). Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that “that no construction is necessary for any terms for the purposes of this Petition as the challenged claims are invalid under any reasonable construction.” Pet. 9. Patent Owner states that “the Board need not construe any claim term in a particular manner to arrive at the conclusion that the Petition is substantively deficient.” Prelim. Resp. 7. 5 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. In view of the parties’ positions, we determine that we need not expressly construe any terms for purposes of this Decision.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “to combine Johnson and Moss is inadequate. See Prelim. Resp. 20–24. We tend to agree. In the “Motivation to Combine Johnson and Moss” section, the Petition first asserts that “Johnson and Moss are in the same field of endeavor,” which is insufficient without more to provide a motivation. See, e.g., Sisvel Int’l S.A. v. Sierra Wireless, Inc., 82 F.4th 1355, 1364 (Fed. Cir. 2023). The Petition then asserts that “[t]o provide enhanced flexibility, [one of ordinary skill in the art] in possession of Johnson would look to Moss to incorporate a plurality of delay elements to the data strobe signal.” Pet. 22. This is not persuasive because (a) Petitioner argues that Johnson already provides a plurality of delay elements, (b) Petitioner fails to explain where or how additional delay elements from Moss would be added to Johnson, and (c) Petitioner fails to explain how or why the modification would “provide enhanced flexibility,” or even what “enhanced flexibility” might mean in 9 “a first sampling circuit to sample the first delayed data signal based on the strobe signal” 10 “a second sampling circuit to sample the second delayed data signal based on the received strobe signal” this context. Petitioner also argues that “Moss further discloses that the size of the data path – i.e. the number of data pins in each data path – is a design choice well within the knowledge and ability of a POSITA, and expressly recites examples of 4, 8, and 16-bit wide data paths.” Pet. 23. We agree that varying the width of the data path would have been within level of ordinary skill and would have depended on the particular application, but the Petition fails to explain how or why that would have made it obvious to incorporate various elements of Moss into Johnson.” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,111,608
• Silicon Motion Inc. v. K.Mizra LLC.Instituted
  PTAB · Mar 5, 2025 · IPR2024-01240 · APJ Michelle N Wormmeester · IPR · Institution

  The Board instituted IPR on claims 1–19 based on all asserted challenges, finding a reasonable likelihood of success on the Meaney and Meaney-Greeff obviousness grounds.

  RulingsInstitution decision

  • 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 as to all the challenged claims of the ’466 patent based on all the challenges presented.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in Electrical Engineering, Computer Engineering, or a related field as well as at least two years of academic or industry experience in design and implementation of high-speed digital communication systems.” Pet. 13. Petitioner further asserts that “[a]n individual with an advanced degree in a relevant field, such as computer or electrical engineering, would require less experience in the design and implementation of high-speed digital communication systems, and vice versa.” Id. Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Petitioner contends that “[a] POSITA would have been motivated to incorporate the termination circuitry disclosed in Greeff with the system of Meaney to achieve enhanced system performance and reliability.” Pet. 53 (citing Ex. 1002, app. A at 82). As support, Petitioner asserts that “Greeff’s termination circuitry ensures proper signal integrity and reduces reflections in high-speed data transmission systems.” Id. (citing Ex. 1006, 1:28–31, 4:10–12, 8:3–5; Ex. 1002, app. A at 82). Petitioner further asserts that “Meaney’s calibration techniques, when applied to the termination resistance and transistor drive strength of Greeff, would ensure that these parameters remain optimal throughout system operation.” Id. (citing Ex. 1002, app. A at 82); see also id. at 54 (“A POSITA would have found it obvious to apply Meaney’s calibration process to Greeff’s termination circuitry in order to optimize the termination resistance and drive strength of the termination circuitry.”). Petitioner adds that “[a] POSITA would have had a reasonable expectation of success in combining Meaney and Greeff.” Id. at 54. According to Petitioner, “[t]he integration of Greeff’s termination circuitry into Meaney’s system would have been straightforward and cost-effective,” any “required modifications are minimal, and the results of the combination are predictable, given the complementary nature of the technologies.” Id. (citing Ex. 1002, app. A at 82). Patent Owner does not dispute Petitioner’s analysis for this limitation. See Prelim. Resp. Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Meaney and Greeff teaches or suggests the recited “circuitry” of limitation 17a. We also are persuaded that Petitioner’s proffered reasoning for modifying Meaney’s system to include Greeff’s termination circuitry, namely, to ensure proper signal integrity and reduce reflections, is sufficient to support institution. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,160,466
• Head Sport GmbH v. Vermont Safety Developments LLCInstitution denied
  PTAB · Jan 15, 2025 · IPR2024-01099 · APJ Barry L Grossman · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show that the prior art met the claims under the Board’s construction of “release logic.”

  RulingsInstitution decision

  • Other 314aNot reached

    “Thus, based in part on the “relatively minimal proceedings” in the District Court, and the “[t]he possibility of significant simplification” for the District Court from our claim construction of the term “release logic,” we decline Patent Owner’s invitation to discretionarily deny the petition. Moreover, we need not address Patent Owner’s contentions concerning discretionary denial because, as discussed below, Petitioner has not established a reasonable likelihood of prevailing on the merits in demonstrating unpatentability of any challenged claim of the ’953 patent. See MillerKnoll, Inc. v. Aaron DeJule, IPR2023-01428, Paper 8, 10 (PTAB March 22, 2024).” slip op. at 20

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We now turn to the merits of Petitioner’s asserted Grounds of unpatentability. Analysis of Claims We focus our analysis on the term “release logic,” which appears in all the challenged claims. As we explained above, we determined that the term “release logic” along with its recited functions should be construed under Section 112 ¶ 6 to cover “corresponding structure, material, or acts described in the specification and equivalents thereof,” that perform the recited functions. Petitioner did not identify how the asserted prior art described those structures or their equivalents. Instead, as discussed above, Petitioner relied on Patent Owner’s preliminary construction in the District Court, which Patent Owner identified in wholly functional terms as a “specific sequence of actions.” Pet. 6 (citing Ex. 1010; Ex. 1002 ¶¶ 52–53); Prelim. CC Reply 1 (citing Ex. 1010, 5). Thus, Petitioner’s analysis fails to address how the prior art meets the limitations set forth in the claims as we have interpreted those claims. Accordingly, we find that Petitioner has failed to meet its burden to establish a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition. Thus we deny institution of an inter partes review. See Samsung Elecs. Am., Inc. v. Cobblestone Wireless, LLC, IPR2024-00319, Paper 16, slip op. 16–23 (PTAB Jun. 24, 2024) (holding that because Petitioner’s obviousness showing was based on an incorrect claim construction, Petitioner did not demonstrate a reasonable likelihood that a claim limitation was disclosed by, or would have been obvious over, the cited reference).” slip op. at 49

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “be persuasive, we conclude that an ordinarily skilled artisan would not have understood “release logic” to refer to, or to have a definite meaning as the name for structure. Accordingly, we find that any presumption that the claims at issue do not invoke § 112, ¶ 6 is overcome, and we conclude that “release logic” introduces claim language that is properly interpreted under § 112, ¶ 6. Dr. Hull’s testimony in the District Court appears to address only the embodiment disclosed in Figures 9–11 of the ’953 patent. He did not opine on the other embodiments disclosed in the patent, such as the embodiment in Figures 22–24 disclosing electronic third-quadrant release-logic binding system 2204. However, his testimony that the words of the claim would not be understood by an ordinarily skilled artisan to have definite meaning as the name for structure remains persuasive.” slip op. at 48

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “sophistication of the technology; and (5) educational level of active workers in the field.” Id. ¶ 30. Dr. Hull fails to state whether these factors were relied upon in forming his opinion, and if so, he also fails to state the underlying facts or data relating to these factors on which the opinion is based. There is no evidence to support why an “advanced degree” in mechanical engineering and five years of relevant experience is required. His opinion is supported only by his statement that he is “familiar with the technology at issue here and the state of the art at the time the application leading to the ’953 patent was filed.” Ex. 1002 ¶ 31. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Here, based on Dr. Hull’s extensive experience, we give his testimony some, but little, weight. Patent Owner states that “for purposes of this Preliminary Response only, VSD does not now dispute the definition of the POSITA as set forth by Dr. Hull.” Prelim. Resp. 7. We note that Patent Owner’s position is based on Dr. Hull’s full testimony, not the excerpt asserted by Petitioner. Accordingly, for purposes of this Decision, and based on the limited record before us, we determine, based on Dr. Hull’s testimony, the cited prior art, and Patent Owner’s qualified agreement with Dr. Hull’s testimony, that a person of ordinary skill in the relevant technology would have had an advanced degree in mechanical engineering or a related discipline and five years of experience in either ski binding design, manufacture, or testing; research concerning ski bindings and related equipment; or the development of standards concerning ski bindings or related equipment. This level of skill is approximate, and more experience would compensate for less formal education, and vice versa.” slip op. at 25

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,523,953
• Google LLC v. 138 East LCD Advancements LimitedInstituted
  PTAB · Jan 10, 2025 · IPR2024-00956 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claims 1–12 on all asserted grounds, finding a reasonable likelihood that Yano and Terashita render claims 1–12 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have jurisdiction under 35 U.S.C. § 314, 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record at this stage of the proceeding, for the reasons set forth below, we determine Petitioner has demonstrated a reasonable likelihood it would prevail in showing the unpatentability of at least one challenged claim in the ’574 patent. Accordingly, we institute inter partes review of claims 1–12 of the ’574 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Construction For purposes of this proceeding, Petitioner and Patent Owner both advocate for the “plain and ordinary meaning” of the claim terms without further analysis. Pet. 19; Prelim. Resp. 15–16. On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “for generating a digital color image to be processed, but relies on Hibi to fill the gap. Id. (citing Ex. 1003 ¶ 114). A determination of obviousness, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Often, it will be necessary for a court to look to interrelated teachings of multiple patents . . . and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above-referenced standard. Hibi discloses the use of a programmable personal computer to process an image “taken with a digital camera.” Pet. 23–24 (citing Ex. 1003 ¶ 114; Ex. 1006 ¶¶ 14, 47–48). Hibi’s apparatus and method includes a recognition unit that recognizes “people and faces” in the image by applying “known techniques, such as detecting skin color areas and facial structures.” Id. at 24 (citing Ex. 1003 ¶ 115; Ex. 1006 ¶ 15). The Petition also relies on Mr. Parulski’s Declaration testimony that a POSITA would have been motivated to apply Luo-250’s image processing method to an image generated by a digital camera, as disclosed in Hibi, “because such images were ubiquitous at the time, and applying Luo-250’s image processing would have improved the image enhancement ‘depending on detecting different objects or subject matters contained within the image.’” Id. at 24 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 16–17). The Petition further argues that a POSITA would have had a reasonable expectation of success in applying Luo-250’s belief map image processing technique to an image generated by a digital camera as disclosed in Hibi. Id. at 25 (citing Ex. 1003 ¶ 118). Petitioner cites to Terashita as evidence that such a combination “would have required applying only conventional techniques for transferring image data from a digital camera to a personal computer (e.g., using a memory card) that were well within the skill of a POSITA.” Id. (citing Ex. 1003 ¶ 118; Ex. 1007 ¶¶ 4, 38–39).” slip op. at 21

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,355,574
• Google LLC v. 138 East LCD Advancements LimitedInstitution denied
  PTAB · Jan 8, 2025 · IPR2024-00955 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–33 unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “1. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (hereafter cited as “KSR”). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17

  • BurdenDecided for patent owner

    “To be sure, the pixel belief values used in the Luo-250 device are based on color. The Luo-250 device determines pixel probabilities “by assigning to each pixel a belief value as belonging to the subject matter region based on color and texture features.” Id. ¶ 42. However, using probability values or binary 1s and 0s to map the probability or “belief” that a pixel or area of pixels in an image either is, or is not, a subject matter target, is not the same as designating “certain pixels as certain colors” as asserted by Petitioner. Thus, we are not persuaded that the Petition has adequately supported or explained how the Luo-250 device designates “certain pixels as certain colors.” We also are not persuaded the Petition has established that Luo-250 discloses, teaches, or suggests a device or method that “determines the color range exhibited by the pixel data groups” as recited in Limitation 1[b]. Pet. 17–18 (citing Ex. 1005 ¶¶ 34–39). First, as indicated above, we are not persuaded the Petition has established that Luo-250 “designates certain pixels as certain colors,” which is foundational to Petitioner’s argument that the Luo-250 method determines a “color range exhibited by the pixel data groups.” Second, the evidence cited by Petitioner when attempting to map the quoted claim language regarding “color range” to Luo-250, refers to the designation of individual pixels as “either skin-tone or non skin-tone” in a binary belief map, not a range of colors. Id. at 18 (citing Ex. 1005 ¶¶ 35–39). Petitioner’s argument—that “[b]y analyzing the pixels to designate each as ‘either skin-tone or non skin-tone,’ Luo-250’s device determines ‘[r]egions of skin-tone colored pixels’ in the image” (id.)—is not persuasive evidence of “determin[ing] a color range exhibited by the pixel data groups” as recited in Limitation 1[b]. The Petition does not adequately explain how Luo-250 discloses, teaches, suggests, or otherwise renders obvious the determination of color ranges for pixel data groups in an image. We are further persuaded by Patent Owner’s argument and evidence that the Petition has not adequately explained how the Luo-250 device would “determine[] a color range” based on a determination of probability values for each pixel, rather than a range of colors. Prelim. Resp. 26–27 (citing Ex. 1005 ¶¶ 32, 34, 36, and 38). Dr. Papanikolopoulos’s Declaration testimony further supports Patent Owner’s position. Ex. 2001 ¶¶ 78–81. Dr. Papanikolopoulos testifies, in particular, that Mr. Parulski asserts only “that Luo-250 considers the color of individual pixels. He does not assert that Luo-250 anywhere ‘analyzes the image data . . . and determines the color range, as claimed.’” Id. ¶ 80. We agree.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “To be sure, the pixel belief values used in the Luo-250 device are based on color. The Luo-250 device determines pixel probabilities “by assigning to each pixel a belief value as belonging to the subject matter region based on color and texture features.” Id. ¶ 42. However, using probability values or binary 1s and 0s to map the probability or “belief” that a pixel or area of pixels in an image either is, or is not, a subject matter target, is not the same as designating “certain pixels as certain colors” as asserted by Petitioner. Thus, we are not persuaded that the Petition has adequately supported or explained how the Luo-250 device designates “certain pixels as certain colors.” We also are not persuaded the Petition has established that Luo-250 discloses, teaches, or suggests a device or method that “determines the color range exhibited by the pixel data groups” as recited in Limitation 1[b]. Pet. 17–18 (citing Ex. 1005 ¶¶ 34–39). First, as indicated above, we are not persuaded the Petition has established that Luo-250 “designates certain pixels as certain colors,” which is foundational to Petitioner’s argument that the Luo-250 method determines a “color range exhibited by the pixel data groups.” Second, the evidence cited by Petitioner when attempting to map the quoted claim language regarding “color range” to Luo-250, refers to the designation of individual pixels as “either skin-tone or non skin-tone” in a binary belief map, not a range of colors. Id. at 18 (citing Ex. 1005 ¶¶ 35–39). Petitioner’s argument—that “[b]y analyzing the pixels to designate each as ‘either skin-tone or non skin-tone,’ Luo-250’s device determines ‘[r]egions of skin-tone colored pixels’ in the image” (id.)—is not persuasive evidence of “determin[ing] a color range exhibited by the pixel data groups” as recited in Limitation 1[b]. The Petition does not adequately explain how Luo-250 discloses, teaches, suggests, or otherwise renders obvious the determination of color ranges for pixel data groups in an image. We are further persuaded by Patent Owner’s argument and evidence that the Petition has not adequately explained how the Luo-250 device would “determine[] a color range” based on a determination of probability values for each pixel, rather than a range of colors. Prelim. Resp. 26–27 (citing Ex. 1005 ¶¶ 32, 34, 36, and 38). Dr. Papanikolopoulos’s Declaration testimony further supports Patent Owner’s position. Ex. 2001 ¶¶ 78–81. Dr. Papanikolopoulos testifies, in particular, that Mr. Parulski asserts only “that Luo-250 considers the color of individual pixels. He does not assert that Luo-250 anywhere ‘analyzes the image data . . . and determines the color range, as claimed.’” Id. ¶ 80. We agree.” slip op. at 22

  • Skill levelSkill level board ownOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,668,365
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01026 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claims 5–8 and 16–19 on all petition grounds, finding a reasonable likelihood of success on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’304 patent. Accordingly, we institute an inter partes review of claims 5–8 and 16–19 of the ’304 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 5[a] receiving, at a second conditional access client of the second conditional access server, an authentication through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses the second root of trust for the second security domain which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’304 patent.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,667,304
• Aylo Freesites Ltd v. Wellcomemat, LLCInstituted
  PTAB · Dec 6, 2024 · IPR2024-01101 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claim 17 on all five grounds, finding a reasonable likelihood of prevailing based on Gupta and Vasilevsky with Logan.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have jurisdiction under 35 U.S.C. § 314, 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to challenged claim 17 in the ’286 patent. Accordingly, we institute an inter partes review of claim 17 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied

    “The USPTO Director has issued “binding agency guidance” for application of the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”), 3.12 Pursuant to the Guidance Memo, “the PTAB will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Id. (citing Sotera). Petitioner has filed a Sotera stipulation providing that: Petitioner and its real parties-in-interest will not pursue in the related district court proceeding where Petitioner is a defendant (WellcomeMat, LLC v. Aylo Holdings Sarl et al., No. 2:23-cv-00483-JRG (E.D. Tex.)) an invalidity challenge of claim 17 based on “any ground that [Petitioner] raised or” slip op. at 12

  • Skill levelSkill level board ownOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Construction For purposes of this proceeding, Petitioner and Patent Owner both advocate for the “plain and ordinary meaning” of the claim terms without further analysis. Pet. 15 (citing Ex. 1002 ¶¶ 72–73); Prelim. Resp. 14–15. On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are invited to address claim construction in their briefs. III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) - FINTIV Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a)” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,307,286
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 5, 2024 · IPR2024-01023 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all petitioned grounds because Roku showed a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have jurisdiction under 35 U.S.C. § 314, 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation. Petitioner proposes the following construction: “authentication processes that are performed by independent roots of trust—i.e., roots of trust with trust determinations that are independent of the outcome of the other.” Reply 3 (citing Ex. 1001, 8:16–38 (“the secondary CA server follows rules (e.g., CA messages) of the primary CA server to manage a secondary subscriber management system”)); see also id. at 5 (“‘independent’ . . . identifies how the first and second roots of trust” “arrive at their first and second authentication determinations, without relying on the output of the other”). Petitioner also asserts that Patent Owner’s patentability argument hinges on a construction of “independent” such that “‘independent’ as used to modify the first and second roots of trust must be construed as independently controlled,” which Petitioner asserts is inconsistent with the ’236 patent claim language and specification. Id. at 1. Patent Owner, for its part, denies that it is advocating for a construction where the two roots of trust are “independently controlled.” Sur-Reply 3. Patent Owner does not offer a construction of the “independent authentication” limitation, citing an unilluminating description where “the client authentication in the secondary security domain is completely independent from the client authentication in the 8 The parties are reminded of the Board’s sanction authority for non-compliance. 35 U.S.C. § 316(a)(6); 37 C.F.R. § 42.12(a)(1). primary security domain.” Id. at 4 (citing Ex. 1001, 8:33–35). On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are ordered to propose and support a specific construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 130[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 32 and 66 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (stating “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir.1991)). We find that, at this stage of the proceeding and based on the present record, Petitioner provides sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236

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.