- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentablePTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28
Patent outcomesUS 10,574,894 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,574,894 - PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,405,457 - PTAB · Apr 17, 2025 · IPR2024-01379 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of review of claim 20, finding that the Fintiv factors favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“(which we address in more detail below) turns on the determination of the meaning of the claim term “periodically.” We note that the District Court has construed the term “periodically monitor” to mean “monitor at regular intervals of time.” See Sec. II.C below. Given this construction, which we preliminarily agree with at this stage, we cannot agree with Petitioner that the Petition presents “a strong case for obviousness.” Thus, we find that Factor 6 weighs in favor of exercising discretionary denial.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“periodically” as it is used in claim 20, with Petitioner arguing that “periodically’ means “repeated . . . over time” and Patent Owner arguing that “periodically” means “at fixed intervals.” See Pet. 25; Prelim. Resp. 8. Our preliminary determination of the ordinary and customary meaning of the term “periodically” as it is used in claim 20 substantially impacts our view of the merits in this case as this issue is the principal one raised by Patent Owner in its Preliminary Response. See Prelim. Resp. 5–22. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears consistent with the subject matter of the ’996 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶¶ 55–56. We adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C. Claim Construction” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,809,996 - PTAB · Apr 10, 2025 · IPR2024-01431 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 2–6, 28, and 33–37 based on all petition grounds, finding a reasonable likelihood that Haddad138 renders claims 2–6 and 33–37 obvious and Yap anticipates or renders claim 28 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). Here, due to Petitioner’s stipulation, the record does not 9 To the extent Patent Owner’s argument emphasizes that the parties have completed substantial work regarding references asserted in the petition here (PO Fintiv Surreply 1–3), this argument addresses to Fintiv factor three rather than factor four. support that the Petition’s invalidity grounds have been or will be presented to the ITC for consideration on the merits. The record also does not support that the ITC will ever adjudicate the invalidity grounds raised here10 and does not support that the ITC will ever address the dependent claims at issue here. This is, therefore, not a situation where the ITC Investigation will “resolve key issues in the petition.” Fintiv at 13. Thus, this factor weighs against discretionary denial. 7. Fintiv Factor Five: Overlapping Parties Petitioner is the same party as the respondent in the ITC investigation,” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose 1 Petitioner calls “IPR2024-01431 (‘Petition B’).” See Paper 3 (PETITIONER’S EXPLANATION OF PARALLEL PETITIONS CHALLENGING U.S. PATENT NO. 11,069,737), 1. of determining whether Petitioner meets the threshold for instituting review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be forfeited. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 2–6, 28, and 33–37 of the ’737 patent based upon Petitioner’s asserted challenges to patentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Patent Owner argues11 that Petitioner “offers no motivation to modify Haddad138.” Prelim. Resp. 7–8. Patent Owner specifically argues that 11 Patent Owner also argues that Petitioner does not establish that Haddad138 anticipates claim 2. Prelim. Resp. 5–7. We do not address the anticipation challenge at this time. “Petitioner does not offer any showing on any motivation to modify Figure 9 of Haddad138 to change the configuration from a FSI to BSI architecture.” Id. at 8. On this record, Patent Owner’s argument does not undermine Petitioner’s persuasive showing. As Petitioner argues (Pet. 29), Haddad138 teaches that its “present disclosure” (which would include the Figure 9 disclosure) can be adapted for a front side illumination (FSI) or back side illumination (BSI) configuration. Ex. 1012 ¶ 48. The express teaching of Haddad138 provides motivation to modify Figure 9 of Haddad138. Patent Owner also argues that Petitioner “offers no showing that a POSITA would be able to modify the embodiment of Figure 9 to be back side illuminated with a reasonable expectation of success.” Prelim. Resp. 9. Patent Owner’s argument again does not undermine Petitioner’s persuasive showing. Petitioner cites Haddad138 expressly teaching a FSI or BSI configuration. Pet. 29 (citing Ex. 1012 ¶ 48). Haddad138’s teaching is sufficient, on this record, to establish a reasonable likelihood of Petitioner establishing a reasonable expectation of success at trial. Conclusion as to claim 2” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had a Bachelor’s degree in engineering, physics, or a related or equivalent field, and two or more years of experience researching, developing, designing, and/or evaluating image sensors using photonics. Ex-1004 ¶50. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Ex-1004 ¶50. Pet. 9. Patent Owner does not dispute the level of ordinary skill in the art at this time. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,069,737 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01377 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review pursuant to 35 U.S.C. § 6(b). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’227 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 22, 2025 · IPR2024-01191 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Wiz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“After Patent Owner filed its Preliminary Response, however, Petitioner filed a stipulation consistent with the stipulation filed in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A) (“Sotera”). Ex. 1107. On June 21, 2022, the Director issued guidance (“Director Guidance”) in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors.6 Notably, the Director stated that the Board “will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the [Patent Trial and Appeal Board].” Director Guidance, 3. With this guidance in mind, we decline to exercise our discretion to deny institution under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1107.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’326 patent. See Prelim. Resp. 63 (citing Ex. 1004, 109, 138). The Examiner, however, did not meaningfully address Veselov during prosecution of the ’326 patent. For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’326 patent. See id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’326 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers essentially the same assessment of the level of skill in the art as Petitioner, arguing the following: a [POSITA] as of the ’326 patent’s earliest priority date (January 28, 2019), would have had at least a Bachelor’s degree in computer science, computer engineering, or a related field, and two years of industry experience or academic research experience in cyber security and virtualization, including cloud computing cybersecurity. Additional education can compensate for less experience and vice-versa. Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 1–12, 19–26). We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment. Petitioner’s assessment is supported by the testimony of Dr. Stavrou and it is consistent with the ’326 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,775,326 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 16, 2025 · IPR2024-01109 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–23 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1093.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’809 patent. See Prelim. Resp. 58–60; see also Pet. 7. The Examiner, however, did not meaningfully address Veselov during prosecution of the ’809 patent. See Pet. 7 (citing Ex. 1004, 73, 107– 115, 156–157, 181–182). For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’809 patent. See id. It is also undisputed that the Examiner did not consider the other references that serve as the basis of Petitioner’s asserted obviousness grounds (i.e., Mohanty, Hutchins, and” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Ex. 1001, 9:48, 11:24, 12:16. Petitioner proposes we construe this term to encompasses two alternative approaches: (1) “direct analysis of the snapshot data”; and (2) “analysis of a VM instantiated from a snapshot.” See Pet. 10. Patent Owner disputes the second approach, but not the first. See Prelim. Resp. 9–12. For purposes of institution, we agree with Petitioner’s first alternative approach—“analyz[ing] the snapshot” encompasses “direct analysis of the snapshot data.” This construction finds support in the ’809 patent’s specification. See, e.g., Ex. 1001, 5:20–21 (“The snapshot is parsed and analyzed by the security system 140 to detect vulnerabilities.”), 5:37–40 (“[T]he security system 140 may be configured to match the application files, either directly (using binary comparison) or by computing a cryptographic hash against [a] database of files in vulnerable applications.”). Because, as we explain below, Petitioner’s obviousness analysis is sufficient under this first approach, we take no position on Petitioner’s second alternative approach, which Patent Owner disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Pet. 8–10, we do not need to further construe the claims to determine whether to institute IPR. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Petitioner’s assessment—without the qualifier—is supported by the testimony of Dr. Stavrou and it is consistent with the ’809 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,726,809 - Meta Platforms, Inc. v. Eight KHZ, LLCSome claims unpatentablePTAB · Jan 7, 2025 · IPR2023-01003 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 3, 6, 15, 16, and 19 are unpatentable; claims 2, 8–10, 12, 14, 17, and 18 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “Call” Terms (Claims 1, 8, and 15) The parties, and their respective experts, agree that “telephone call” (claim 1), “electronic call” (claim 8), and “electronic phone call” (claim 15) should be interpreted to mean “voice communication over an electronic network between at least two parties,” which was Patent Owner’s proposal in the district court case. See Pet. 16, 19 n.8, 58 (citing Ex. 1027, 9);1 Ex. 1003 ¶ 82; Ex. 2011 ¶¶ 51–53; Ex. 2016, 176:10–177:6 (Dr. Kyriakakis agreeing that “there is live voice exchange during a telephone call” (in addition to “background noise”)), 180:22–181:11 (same). Based on our review of the ’090 patent, we agree as well and adopt that interpretation for purposes of this Decision. See, e.g., Ex. 1001, col. 3, l. 1–col. 5, l. 44 (“Consider an example in which a listener sits at his kitchen table and has an electronic telephone call with his mother.”), Fig. 1. 1 When citing non-patent references, we refer to page numbers added by Petitioner in the bottom-right corner of the exhibit. Listening Person” (Claim 1) and “Sound Localization Point . . . Away From and Proximate to the First Person” (Claim 15) a) Procedural History As explained above, the parties did not propose any express interpretations in their Petition and Response. See Pet. 15; PO Resp. 3. Patent Owner argued, however, that “Petitioner and Dr. Kyriakakis misapprehend the scope and meaning of the [c]hallenged [c]laims.” PO Resp. 35–49. For example, Patent Owner argued that they “mischaracterize [c]laim 1’s scope as exclusively directed at binaural recording (but not binaural synthesis),” claim 8 “inherently us[es] binaural synthesis and HRTF processing,” and “binaural synthesis methods must be employed” for claim 15. Id. at 36, 46, 48–49 (emphasis omitted). In its Reply, Petitioner characterized the dispute between the parties as pertaining to the phrase “away from and proximate to,” where Petitioner proposed an interpretation of “a distance from” and Patent Owner allegedly was proposing “externalization of sound through HRTFs and [6 degree of freedom (6DOF)] tracking of the listener relative to the SLP that represents the talker.” Reply 2–12. Patent Owner responded in its Sur-Reply by stating that Petitioner “mischaracterizes” Patent Owner’s arguments, Petitioner “disputes constructions that [Patent Owner] never proposed,” and Petitioner’s focus on certain claim language for which Patent Owner “never proposed construction” was “misplaced.” Sur-Reply 1–2, 11. Patent Owner agreed, though, that the parties’ disagreement was “whether the claims require HRTF processing and whether [the] prior art teaches such processing.” Id. at 5; see Tr. 49:19–21 (Patent Owner agreeing that the dispute is “whether the claims require . . . processing with HRTFs”). dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner relies on its earlier arguments regarding claim 17. Pet. 41; see Ex. 1003 ¶ 184 (citing earlier analysis of Bedingfield). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to apply Ballas’s wearable frame with head tracking and HRTF processing to Bedingfield-Andrea’s headphones” to “provide[] a more realistic virtual experience,” but does not make any argument that Ballas teaches changing an ITD. Pet. 39–43; see Ex. 1003 ¶¶ 175–191. For the reasons explained above, we are not persuaded that Bedingfield teaches changing an ITD. See supra Section II.D.6. Accordingly, Petitioner has not proven, by a preponderance of the evidence, that claim 18 would have been obvious based on Bedingfield, Andrea, and Ballas under 35 U.S.C. § 103.” slip op. at 61
- Strike new argumentNew argument consideredDenied
“exceptional remedy of striking sentences in the Sur-Reply. Patent Owner filed the deposition transcripts of Dr. Welch and Dr. Roginska “only for the limited purpose of allowing the Board to understand the context of the cross-examination” and “does not rely on the[] [e]xhibits for any substantive argument in [the] Sur-Reply.” Sur-Reply v–vi. Patent Owner does not cite Exhibits 2029 and 2030 themselves in its Sur-Reply; it only cites Dr. Kyriakakis’s deposition transcript in this proceeding. Id. We agree with Patent Owner that its arguments in the Sur-Reply are properly responsive to the Reply because they address Dr. Kyriakakis’s cross-examination testimony where he was questioned about the opinions in his reply declaration (but we do not agree with Patent Owner’s claim interpretation arguments on the merits, for the reasons explained above). See Mot. to Strike Opp. 3; supra Section II.B.2.e. We also agree, under the particular factual circumstances presented, that filing Exhibits 2029 and 2030 was proper so the Board has the full context in which to evaluate Dr. Kyriakakis’s cross-examination testimony. Petitioner’s Motion to Strike is denied.” slip op. at 79
Patent outcomesUS 9,226,090 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,226,090
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.