- PTAB · Jul 28, 2025 · IPR2025-00308 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claim 1, finding a reasonable likelihood it would be shown obvious over Darnell and Kim; it did not reach the Dasgupta and Kim ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown 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.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in computer science and two years’ experience in cloud computing or a similar field, or a master’s degree in computer science or similar field.” Pet. 8 (citing Ex. 1002 ¶¶ 1–55, 119–122). Patent Owner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in electrical engineering or computer science, and approximately 3 years of experience working with content management systems and graphical user interfaces; or a more advanced degree such a master’s or doctorate with proportionally less work experience.” Prelim. Resp. 14. Petitioner and Patent Owner’s descriptions of a person of ordinary skill are similar, although Patent Owner’s proposal is slightly more experienced. Both appear to be reasonably consistent with the subject matter of the ’068 patent. For purposes of this decision, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶ 121; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’068 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to a user.” Pet. 15 (citing Ex. 1002 ¶ 390–391). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for a user,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pet. 15–16 (citing Ex. 1002 ¶ 391; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 16 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 391). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the user interface based on those traits in Darnell’s feed aggregation system. Id., ¶ 392. A POSITA would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any user device (e.g., phone, computer, tablet, etc.) instead of only on a single user device. Pet. 16–17 (citing Ex. 1002 ¶¶ 392–395). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell and Kim to be compatible because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified user interface displayed on a user device. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 396-397. Thus, a POSITA would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of the user device based on Darnell’s teachings.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,068 - PTAB · Jul 28, 2025 · IPR2025-00307 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–18 on all four § 103 grounds, finding a reasonable likelihood that claim 1 would have been obvious over Darnell and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Settled expectationsDecided for patent owner
“or “Petition”), to institute an inter partes review of claims 1–18 (the “challenged claims”) of U.S. Patent No. 9,729,658 B2 (Ex. 1001, “the ’658 patent”). On March 28, 2025, the Board issued a notice extending the deadline for discretion briefing pursuant to the bifurcated discretionary denial review process that applies to proceedings with a patent owner preliminary response due after March 26, 2025.1 Paper 10. On May 1, 2025, RazDog Holdings LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”). Patent Owner filed a request for discretionary denial. Paper 11. Petitioner filed an opposition to Patent Owner’s request for discretionary denial. Paper 13. On May 16, 2025, the Acting Director issued a decision denying Patent Owner’s request for discretionary denial and referring the petition to the Board. Paper 18.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’658 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to users.” Pet. 13 (citing Ex. 1002 ¶ 146). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for users,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pat. 13–14 (citing Ex. 1002 ¶ 146; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 14 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 146). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the UI based on those traits in Darnell’s feed aggregation system. Id., ¶147. POSITAs would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any device (e.g., phone, computer, tablet, etc.) instead of only on a single device. Pet. 14–15 (citing Ex. 1002 ¶¶ 147–150). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell’s and Kim’s compatibility because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified UI displayed on user devices. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 151–152. Thus, POSITAs would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of user devices based on Darnell’s teachings.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,729,658 - PTAB · Jun 26, 2025 · IPR2025-00217 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–5, 10–15, and 20 on all four asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). For the reasons set forth below, we institute review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent, and we adopt it here.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties’ dispute on this issue turns on claim construction. Petitioner’s approach requires we read “accumulation” as updating transmission power for each received TPC command. That is consistent with some aspects of the ’153 patent’s description. See Ex. 1001, 9:29–42 (“[S]tep is the magnitude of the amount added to an accumulator upon receipt of each TPC command. . . . [T]he transmit power PTx(k) may be updated each time a new TPC command is received.”). Patent Owner’s approach requires only that TPC commands cumulatively affect transmission power. That also appears consistent with the ’153 patent’s description. See id. at 9:35–36 (“The transmit power PTx(k) may be updated for every frame period.”). Based on those disclosures, it appears that the Specification supports Patent Owner’s broader construction. We need not resolve the “accumulation” claim-construction dispute at this stage, because Petitioner’s Zeira-based ground justifies institution, as discussed below. The parties should address the proper construction for “TPC command accumulation” in the instituted trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner that the present record shows Andersson’s and Khan’s approaches couldn’t or wouldn’t be combined in the manner Petitioner asserts. Although shared-channel applications may have motivated Khan’s approach, it seems that scheduling grants applicable to a particular UE could be transmitted to that UE along with Andersson’s TPC commands. Thus, Patent Owner does not undermine Petitioner’s prior-art combination on the present record. The additional record developed through trial may ultimately support Patent Owner on this point, but at present, this argument does not justify denial of institution. Patent Owner additionally takes issue with Petitioner’s asserted benefits such as “allowing for a larger number of active wireless units,” reducing complexity, and reducing latency. Prelim. Resp. 38 (quoting Pet. 26–27). Those disputes raise potential factual issues that are best resolved through trial.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 10,952,153 - PTAB · May 23, 2025 · IPR2025-00050 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–3 and 5 on all asserted grounds; the Board found a reasonable likelihood of prevailing on obviousness over Walker.
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 determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–3 and 5. Accordingly, we institute an inter partes review of those claims. We do not address claims 4 and 6–13 because Patent Owner disclaimed those claims. See Exs. 2001, 2008; Prelim. Resp. 30; Supp. Prelim. Resp. 3.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Jury trial in the Related Litigation is currently scheduled to begin on June 22, 2026. Ex. 1008, 16. The statutory deadline for issuing a Final Written Decision predates the trial by approximately one month. Patent Owner argues that Petitioner was not diligent in filing the Petition, and this factor favors discretionary denial. Supp. Prelim. Resp. 2. Petitioner argues that Factor 2 favors institution because that Final Written Decision date precedes the scheduled trial date and also because based on the median time to trial for Judge Noreika, the judge presiding over the Related Litigation, the anticipated trial date would be in December 2026. Pet. Supp. Resp. 2. Petitioner also points out that even based on the median time to trial in the District of Delaware, the trial in the Related Litigation would occur in October 2026. Id.; Pet. 72. We agree with Petitioner that based on median time-to-trial statistics for the District of Delaware and for Judge Noreika, the Final Written Decision in this proceeding would issue a few months before the anticipated trial date and a month before the currently scheduled trial date. Exs. 1007, 1012. This factor therefore weighs against exercising our discretion to deny institution.5” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Walker discloses that during normal television viewing, a broadcast program is provided to and displayed on an interactive television system and a streaming version of the broadcast program is provided to a television distribution facility in advance of the broadcast. Ex. 1005 ¶ 10. Walker explains that if a user requests a playback control function, the interactive television system may switch from displaying the broadcast television program to the streaming version of the program. Id. When switching, the system may switch to displaying the streaming version of the program at the same point in time in the program that the user was viewing in the broadcast program. Id.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Only those claim terms that are in controversy need to 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). Petitioner contends that “[b]ecause the asserted prior art discloses embodiments within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims.” Pet. 3. Petitioner lists several terms and proffers its position on the plain and ordinary meaning of those terms. Id. at 4–6. Patent Owner does not challenge Petitioner’s claim construction positions. Prelim. Resp. 5. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,880,592 - PTAB · Apr 29, 2025 · IPR2025-00180 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Comcast would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. Petitioner has complied with our guidance by filing a statement ranking the petitions. See Practice Guide, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2025-00181 and IPR2025- meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts. warranted. Given our Decisions to Deny Institution in IPR2025-00181 and IPR2025-00182 and the official guidance we have received in the Practice Guide, we have no option but to deny Patent Owner’s request that we exercise our discretion to deny institution on all three of the petitions challenging the ’275 patent. Accordingly, we do not exercise our discretion to the deny institution in the instant proceeding. E. Anticipation of Claim 1 by Zhang” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’275 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7 7 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that all of the limitations “should be given their ordinary and customary meaning to a” person having ordinary skill in the art. Pet. 19. Although Petitioner argues that none of the limitations are means-plus-function terms, Petitioner provides constructions to the extent that there are means-plus-function terms. Pet. 19–20. Patent Owner does not respond. See Prelim. Resp. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 8 If either party intends to argue a claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“Practice Guide”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ 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))). D. Parallel Petitions” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,785,275 - Silicon Motion Inc. v. K.Mizra, LLCInstitutedPTAB · 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 · GrahamPatents in suitUS 9,111,608 - Silicon Motion Inc. v. K.Mizra LLC.InstitutedPTAB · 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 PhillipsPatents in suitUS 9,160,466 - PTAB · Mar 4, 2025 · IPR2024-01253 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 based on a reasonable likelihood of obviousness over Eldering-I and Eldering-II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“The CTPG states that “the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation.” CTPG 59. Patent Owner does not “clearly proffer any necessary stipulations” as the CTPG stresses. See id. at 61 (“If stating that issues are not material or in dispute, the patent owner should clearly proffer any necessary stipulations. For example, the patent owner may seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.”).” slip op. at 7
- Other 314aDecided for petitioner
“The Director has broad authority to exercise discretion to deny a petition under § 314. However, Patent Owner does not assert that Petitioner is a real party in interest with United Patents or allege that Petitioner is in a special relationship with Unified Patents based on its membership status, with respect to the EPR. See Paper 11, 5; Ex. 2013, 8–12 (different IPR finding no special relationship between Hulu and Unified Patents); Fintiv, Paper 11 at 13–14 (“If a petitioner is unrelated to a defendant in an earlier court proceeding, the Board has weighed this fact against exercising discretion to deny institution under NHK.”). In addition, the EPR involves only independent claims 1, 10, 19, and 27 and a different combination of prior art. See Ex. 2009, 1, 6 (relying on Wu, Rosenberg, and Angel, or Wu Rosenberg, Eldering, and Engel). In general, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311. Accordingly, we determine that the circumstances outlined do not tilt toward exercising discretion on this record to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Mar 4, 2025 · IPR2024-01252 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 on the asserted obviousness ground over Wu and Doherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Contrary to Patent Owner’s arguments, Wu and Doherty are not cumulative to Knepper. As Petitioner argues, the Petition relies on Wu’s teachings regarding a digital recording/play back system allowing users to fast forward through or skip over advertisements during playback and Doherty’s teachings regarding rescheduling advertisements and other items of information (e.g., media content) in response to user input—neither set of teachings is present in Knepper. Reply 2.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construction for “intersplicer” as “software that selects advertising content and controls insertion and conveyance of advertising content in media content.” Pet. 5 (citing Ex. 1001, code (57), 7:45–55, 15:4–18). The specification implies that the intersplicer is “application software” that may include an “‘intersplicer’ module.” Ex. 1001, 7:45–58. The module “select[s] . . . the ads to be shown” and controls the insertion and conveyance of ads and the application software “automatically edits the selected advertisements into the presentation stream.” See Pet. 5 (quoting Ex. 1001, 7:45–55; citing Ex. 1003 ¶ 23); see also Ex. 1001, code (57) (“The intersplicer combines the media files with the ad files by providing control signals to the media player, causing the media player to present the ad files with the selected media files.”). Patent Owner does not propose a construction for “intersplicer” at this stage in this proceeding. See generally Prelim. Resp.7 The preliminary record supports Petitioner’s proposed construction of an “intersplicer” for purposes of this Institution Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Feb 28, 2025 · IPR2024-01445 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–20 based on all six asserted obviousness grounds under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the district court litigation was dismissed with prejudice on January 17, 2025. Prelim. Reply 1; Ex. 3001, 10. Accordingly, there is presently no parallel litigation to consider under Fintiv. Nevertheless, Patent Owner argues that “the dismissal of the complaint does not eliminate the relevance of the many Fintiv factors.” Prelim. Sur-reply 1. We disagree. Fintiv indicates that “[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6 (emphasis added). Here, we have not a stay of the district court litigation, but its dismissal with prejudice. See Ex. 3001, 10. Thus, concerns about inefficiency and duplication of efforts are not merely allayed, but are instead obviated.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board analyzes this issue under the following two-part framework set forth in the precedential Advanced Bionics case: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). As an initial matter, there is no dispute that at least Garecau and TealLevel were not previously presented to the Office. See Prelim. Reply 2 (“Grounds 5 and 6 are based entirely on new references and therefore could not mirror [the prior art combinations asserted] by the Examiner.”); see generally Prelim. Resp. Garecau and TealLevel are the only two references in Grounds 5 and 6. See Pet. 3. Patent Owner does not argue that Garecau and TealLevel, or the arguments presented in these grounds, are the same or substantially the same as art or arguments previously before the Office. See generally Prelim. Resp. 10–16 (making no § 325(d) arguments based on Garecau or TealLevel or directed to Grounds 5, 6). Accordingly, because there is no dispute that Grounds 5 and 6 present art and arguments that were not previously before the Office, in this case we find that § 325(d) is not slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). Petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response (and any additional authorized briefing of record) shows a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We additionally agree with Petitioner that the level of skill proposed by both parties is substantially the same. Specifically, both parties propose a similar education level (Bachelor’s degree in a relevant field of science or engineering) and similar experience (1–2 years of industry experience, including knowledge of sensor design and application development). We observe that in Patent Owner’s proposal, the recited experience is possibly a bit more specific than in Petitioner’s proposal (e.g., it recites “commercial app development” experience and some programming experience). See Prelim. Resp. 3 (emphasis added). However, at this stage and absent argument to the contrary, we discern no material difference between the parties’ proposals. Petitioner’s proposal is consistent with the level of ordinary skill reflected in the prior art references of record, and unlike Patent Owner’s proposal at this stage, is supported by declarant testimony. See Okajima, 261 F.3d at 1355. Accordingly, for purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s proposal, the outcome of this Decision would be the same.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,890,925
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.