- Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00367 · APJ Scott B Howard · IPR · Final written decision
Claims 1–4 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground and dismissed Petitioner’s motion to exclude as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We maintain the definition of a person having ordinary skill in the art that we adopted in the Institution Decision. First, it is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Second, Patent Owner states that it adopts that definition. PO Resp. 3. Third, to the extent Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. Id. Fourth, Patent Owner does not point to sufficient evidence to support its position. Id. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence,” Patent Owner does not direct us to any specific portion of the record. See id. We decline to search the record to find the evidence that supports it. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As discussed below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 under Patent Owner’s proposed construction. See Section II.E.3. Because we only construe limitations “to the extent necessary to resolve the controversy,” we do not expressly construe this limitation. See Nidec, 868 F.3d 1017 (quoting Vivid, 200 F.3d at 803).” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“preserved the objection by filing a timely motion to exclude. Mot. Exclude. Specifically, Petitioner argues that we should exclude Exhibit 2001 for three reasons: (1) it is untimely and prejudicial (37 C.F.R. §§ 42.23(b), 42.53(b); Fed. R. Evid. 403), (2) hearsay (Fed. R. Evid. 802), and (3) the best evidence rule (Fed. R. Evid. 1002). Id. The Stemer Declaration is used only to support Patent Owner’s arguments with respect to secondary considerations.5 PO Sur-reply 19–22; Ex. 2001; Ex. 2002. Because we do not reach obviousness, see infra Section II.F, we do not consider the Stemer Declaration, and we therefore dismiss the motion to exclude as moot.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 7,357,310 unpatentableClaim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 7,357,310 - 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 - PTAB · Apr 1, 2025 · IPR2024-01396 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–19 under all petition grounds, finding a reasonable likelihood of success on obviousness; the majority declined Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“independent claims’ features. The vast majority of Petitioner’s assertions are uncontested at this stage. Further, Petitioner’s evidence shows that Bennett discloses “a first network stack Application Programming Interface (API), containing at least one first call accessible to each of a plurality of device applications, the first network stack API callable by each of the plurality of device applications to open and use data packet flows via the network stack, the wireless modem, and the at least one wireless network,” which is the only limitation that Patent Owner disputes at this stage of the proceeding. See infra, Section III.2. For the sole feature missing from Bennett—i.e., application-based data usage monitoring—Petitioner presents clear and uncontested evidence, backed by multiple prior art references, that the technique and its benefits were well known, as outlined below. Petitioner also articulates, with clear support from its expert and the prior art, not just one but several reasons that would have motivated a skilled artisan to combine Vadde’s application-based data monitoring technique in Bennett. For these reasons, we determine that the merits of at least one ground raised in the Petition are particularly strong. Thus, this factor weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness analysis. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and we are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenges to the challenged claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communication network applications and software.” Pet. 2. Further, “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 8. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’918 patent.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“modem, network stack, and Application Programming Interfaces. Pet. 19– 29. Petitioner further relies on Bennett for its disclosure of routing network data via a first network stack application programming interface (“API”) or a second API call to a proxy media service manager that interfaces with the network stack. See id. at 29–43. Petitioner adds Vadde for teaching managing data traffic for applications using a policy-based system that enforces restrictions based on an application’s data usage. Id. at 44–57. With support from its expert Dr. Traynor and a number of prior art references, Petitioner explains that “the benefits of data usage monitoring were well-known prior to the ’918 Patent and would have been part of a POSITA’s general knowledge.” Id. at 15 (citing Exs. 1003, 1044, 1045, 1062, 1063). Petitioner articulates a number of those benefits including, for example, to facilitate identifying and restricting data-intensive applications to reduce battery usage and to facilitate greater control over data-intensive application activities that risk degrading networks high costs for users. Id. at 15–17 (citing Exs. 1003, 1041, 1042, 1046). In addition, Petitioner explains that adding per-application data usage monitoring to Bennett’s device “would have enabled device manufacturers and service providers to incorporate additional applications and functionality into wireless devices while allowing users to retain control of aggregate device data usage.” Id. at 17 (citing Exs. 1003, 1042). Petitioner adds three references, Riggs, Hendrickson and Srikantan, for their disclosures of various dependent claim features including log generators/reports, storing data associated with played media content, and a network resource indicator that identifies the media object. Pet. 58–95.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,647,918 - PTAB · Mar 20, 2025 · IPR2024-01407 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claim 26 on the Shell and Cole §103 ground, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on a holistic analysis of the Fintiv factors taking into consideration “whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering these disclosures together with the cited paragraphs of Petitioner’s declaration, Petitioner sufficiently shows on the present record that one of ordinary skill in the art would have understood that, in Shell, when a user attempts a voice call, the user can cause a current data connection to disconnect, because (1) a voice-related connection request will be made, (2) the request for voice connection will be prioritized over data requests, and (3) the request will also be prioritized if it is coming from an active application rather than an application running in the background. Pet. 47; Ex. 1003 ¶ 140; Ex. 1005 ¶¶ 8, 13, 14, 57. On the preliminary record, the relied-upon portions of Shell adequately show a determination of whether an application is an active application for prioritization purposes and disconnecting a current data connection due to a user attempting to make a voice call. Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call would be a user interaction resulting in a request for a voice connection that would be prioritized over the data request of another application using the current data connection. See Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call also involves a user interacting with an application to make it an active background. See Ex. 1003 ¶ 140. Petitioner, thus, sufficiently shows for institution that Shell’s processor is “configured to determine that the different application is an active application based on a user interaction with the different application,” as required by claim 26. Pet. 47; Ex. 1003 ¶ 140.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“One of ordinary skill in the art, Petitioner argues, would have, thus, been motivated to look to references, such as Cole, that provided mobile devices with network access while addressing cost, power, and network selection. Pet. 13–14 (citing Ex. 1003 ¶ 68; Ex. 1006, code (57), ¶¶ 14–15, 78, 83, 88, 98). Petitioner also argues that Cole describes Internet access control techniques based on conditions, such as power state change and load on current communication links, and that applying Cole to Shell would have “promoted more efficient communications and network access connectivity.” Id. at 14 (citing Ex. 1003 ¶ 68; Ex. 1006 ¶¶ 83, 98). Using Cole’s techniques, the proposed combination, Petitioner explains, would have evaluated network and power conditions, determined whether to apply an Internet access control, evaluated further conditions, such as whether the application is running in the foreground or background, and then determined the priority of packets traveling over the selected network. Pet. 14 (citing Ex. 1003 ¶ 68; Ex. 1005 ¶ 92; Ex. 1006 ¶¶ 11, 78, 83, 88, 98). Petitioner also argues that one of ordinary skill in the art would have incorporated Cole’s communication manager 260 into Shell’s connection manager modules 210 and would have incorporated Cole’s connections.” Id. at 14–15 (citing Ex. 1003 ¶ 70; Ex. 1005 ¶ 32, Fig. 1; Ex. 1006 ¶ 31). Petitioner further argues that the proposed combination would have included the processors, non-transitory memory, and display, as taught by both references, to perform the recited operations. Id. at 15 (citing Ex. 1003 ¶¶ 71–72; Ex. 1005 ¶¶ 38–44, Fig. 1; Ex. 1006 ¶¶ 34, 40, Fig. 2). Petitioner additionally argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because it “would have required only routine programming knowledge well within [ordinary] skill,” “would have amounted to nothing more than the use of a known technique to improve similar devices . . . in a similar way,” and would have been “combining prior art elements according to known methods to yield predictable results.” Pet. 15–16 (citing Ex. 1003 ¶¶ 73, 74; Ex. 1005 ¶¶ 36, 40; Ex. 1006 ¶¶ 34, 35, Fig. 2).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s declarant opines that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in services and application implementation in communication networks.” Ex. 1003 ¶ 15. The declarant also opines that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. “For purposes of [its] Preliminary Response, Patent Owner does not challenge that definition.” Prelim. Resp. 5 (citing Pet. 13 n.2; Ex. 1003 ¶ 15); see also Ex. 2010 ¶ 27 (stating “[f]or purposes of . . . my analysis, I do not disagree with this proposed level of skill in the art”). Based on the” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,179,359 - Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13
- ExcludeDenied
“III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47
Patent outcomesUS 8,404,508 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,404,508 - PTAB · Feb 12, 2025 · IPR2024-01140 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–51 and all petition grounds, finding a reasonable likelihood that claims 1–20, 22–42, and 44–51 are obvious over TML6 and Fandrianto, and claims 21 and 43 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Absent specific evidence, the Board typically “will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even assuming that evaluating the summary of TML6 in the challenged patent’s background were the same as evaluating the TML6 code, Petitioner has shown under Becton, Dickinson factors (e) and (f) that the Office erred by overlooking the TML6-Fandrianto combination for the reasons discussed below in the analysis of Petitioner’s challenges. See infra Section II.E. That is, we disagree with Patent Owner that Petitioner has failed to meet its burden. Prelim. Resp. 36–37. Thus, none of Becton, Dickinson factors (c), (e), and (f) weigh in favor of denying the Petition under § 325(d). 4. Conclusion We do not exercise our discretion to deny the Petition under § 325(d).” slip op. at 16
- Skill levelOther
“Patent Owner argues that a person of ordinary skill in the art “would be an electrical and/or computer engineer with one to two years of experience relating to video coding hardware and/or software.” Prelim. Resp. 26. We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure 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.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 27. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,280,599 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Feb 5, 2025 · IPR2024-00920 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–24, 26, 29–33, 35, or 38 were unpatentable over the asserted Koga-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “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(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 Petitioner has not established a reasonable likelihood that it will prevail in proving the unpatentability of at least one challenged claim of the ’991 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. at 25–26 (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based on the ordinary meaning of the phrases, “spatial samples” and “spatial information” must refer to different information. Because the “spatial samples [are] decoded into spatial information,” the decoded “spatial information” must be different than the coded “spatial samples.” If “spatial information” were the same as “spatial samples,” then there would be nothing to decode. That construction is consistent with the claim construction rule that different terms are presumed to have different meanings. See MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings . . . .”)). Here, we see no evidence that the claim phrases have the same meaning. To the contrary, the ’991 patent uses the term spatial samples to refer to the image’s pixel values. See, e.g., Ex. 1001, 2:65–67 (“the prediction error signal for a single image block is constructed using both transform basis functions and spatial samples (i.e., pixel values)”) (emphasis added); id. at 4:21–26 (same). The spatial information, however, refers to the result of decoding. See, e.g., id. at 3:29–30 (“the plurality of spatial samples are decoded into decoded spatial information”) (emphasis added); id. at 6:53–55 (“the decoded spatial information and reconstructed prediction of the image block are added together to form the decoded representation of the image block”) (emphasis added); id., Fig. 5, 520 (showing “Decoded Spatial Info”). This is consistent with the claim’s plain language. See id. at 10:1–2 (claim 22 reciting “decoding, by a processor, the plurality of spatial samples into decoded spatial information”) (emphasis added). Accordingly, “spatial samples” and “spatial information” do not refer to the same thing.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument. Petitioner maps both spatial samples and spatial information to the residual of the prediction error. Compare Pet. 37 (referring to spatial samples as the residual of the prediction error), with id. at 44 (referring to spatial information as the residual of the prediction error). However, because spatial samples and spatial information cannot refer to the same thing, they cannot both be the residual of the prediction error. See Section II.C.1 supra. Accordingly, Petitioner has not sufficiently shown that claim 22, along with dependent claims 23, 24, 26, and 30 would have been obvious over Koga. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”); Pet. 47–63 (relying on the analysis of claim 22 for the spatial samples and spatial information limitations). With regard to independent claim 31, along with dependent claims 32, 33, and 35, Petitioner relies on the same arguments discussed above for limitation 22a and 22c to show that Koga teaches commensurate limitations 31c and 31d. See Pet. 54 (“As explained above, Koga teaches the shared substantive limitations of [22a]–[22d] (supra §§VI.A.1) that correspond to limitations [31b]–[31e].”). Accordingly, for the same reasons discussed above for claim 22, we are not sufficiently persuaded by Petitioner’s arguments that independent claim 31, along with dependent claims 32, 33, and 35 would have been obvious in view of Koga.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 16, 2024 · IPR2024-00945 · APJ Stephen E Belisle · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–24 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Prelim. Resp. 22; Ex. 2001 ¶ 67. Patent Owner argues Petitioner relies on Freund to “cure this deficiency,” but the “Petition fails to explain why [the skilled artisan] seeking to implement a Rao-based system would look to Freund’s teachings of foreground/background classifications designed to limit an employee’s ‘counterproductive Web browsing.’” Prelim. Resp. 22. According to Patent Owner and its expert, Mr. de la Iglesia, the skilled artisan “would not have been motivated to do so, because directly contrary to Rao which suggests prioritizing foreground activity over background activity, the relevant teachings of Freund restrict foreground activity relative to background activity.” Id. (citing Ex. 2001 ¶¶ 67–79); see Ex. 2001 ¶¶ 69 (“Rao favors foreground activity, and Freund favors background activity”), 70 (“In contrast [to Rao], Freund teaches the opposite—that foreground activity should be disfavored relative to background activity.”); Prelim. Resp. 23–25. Patent Owner argues the “Petition does not explain why [the skilled artisan] would have been motivated to combine these two references’ treatment of foreground/background classifications, given their opposing treatment of foreground and background activity.” Id. at 25; see id. at 25–28 (Patent Owner explaining why “none of the Petition’s motivations would have justified combining Rao’s and Freund’s contradictory teachings regarding treatment of foreground activity.” (citing Ex. 2001 ¶¶ 74–79)). In short, according to Patent Owner’s expert’s persuasive testimony, “if [the skilled artisan] were looking for ways to supplement Rao’s treatment of foreground activity, they would not have looked to teachings that explicitly disfavor foreground activities, contrary to Rao’s teachings.” Ex. 2001 ¶ 79 (cited at Prelim. Resp. 28).” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 5–6 (“For purposes of this Preliminary Response, Patent Owner does not challenge that definition.”). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’613 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 61), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 3 (“No terms require construction to resolve this Petition.”); Prelim. Resp. 6 (“Patent Owner agrees that no formal claim construction is necessary.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,215,613 - PTAB · Dec 16, 2024 · IPR2024-01005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–23 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . 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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“under the sixth Fintiv factor only after a determination that the first five Fintiv factors favor discretionary denial. CommScope, 4–5. Here, we do not find the first five factors cumulatively weigh in favor of discretionary denial. Therefore, we determine that the circumstances here do not warrant an analysis of whether the Petition presents compelling merits, and the considerations of the sixth Fintiv factor weigh against exercising discretionary denial. F. Conclusion Having considered the parties’ arguments in view of the Fintiv factors, and taking into account Petitioner’s stipulation, we determine that the circumstances here do not warrant exercising discretion under § 314(a) to deny institution. IV.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Thus, although both parties indicate that no claim construction is necessary at this stage of the proceeding, it is apparent that they disagree as to the meaning of “discrete carbon nanotubes.” While Petitioner appears to construe “discrete carbon nanotubes” as “nanotubes that are generally individually distinct” (Pet. 13), Patent Owner argues a more restricted construction requiring that “discrete carbon nanotubes” not be reacted with other components. Prelim. Resp. 3. The evidence relating to claim 10 In quotations from the Preliminary Response throughout this Decision, we have retained bolding and underlining added to the text by Patent Owner. construction that Patent Owner offers on the current record, however, does not address its proposed restriction. See id. at 9, n. 4, citing Ex. 1001, 3:9, 5:39–40 (“The ’649 Patent describes the ‘discrete carbon nanotubes’ as, for example, ‘individually dispersed’, ‘individualized carbon nanotubes’, ‘dispersed as individual nanotubes’, and ‘essentially discrete individual fibers, not entangled as a mass.’”). As discussed in Section II.D.2 below, we determine based on the record at this stage of the proceeding that Petitioner demonstrates sufficiently for purposes of institution that Sun discloses or suggests “discrete carbon nanotubes.” Therefore, we do not explicitly construe any claim terms in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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))). If either party intends to argue a claim construction at trial, however, including what is the 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) (“CTPG”), 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’ meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least [a] Master’s degree in materials science, chemistry, chemical engineering, a field relevant to polymer science and engineering, or the equivalent, and at least three years of experience in nanomaterials, electrochemistry, batteries, or polymer related activities.” Pet. 5 (citing Ex. 1003 ¶ 19). Petitioner further argues that “[a]dditional work experience can compensate for less formal education, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’649 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,636,649 - PTAB · Nov 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Remand
On remand, the Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Sturman and Ho.
RulingsRemand decision- RemandOther
“(“Decision Denying Institution” or “DDI”). Petitioner filed a request for Director Review and the Director vacated and remanded our Decision Denying Institution. Paper 11 (Petitioner’s Request for Director Review); Paper 12 (“Remand Dec.” or “Remand Decision”). Specifically, the Director directed that we: shall issue a new decision on institution resolving the claim construction of “a non-promotional background object.” Consistent with Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005), the Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary. See, e.g., Samsung Elecs. Co., Ltd. v. Slyde Analytics, LLC, IPR2024-00040, Paper 14 at 7–8 (Vidal Aug. 2, 2024) (discussing the Phillips framework). The Board shall consider all remaining necessary issues, and determine whether to institute trial consistent with this decision. Id. at 7–8 (footnote omitted).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Sturman and Ho. 4. Analysis of Claims 2–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’089 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 26–36. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“draws a distinction between foreground and background objects. Specifically, the prosecution history makes it clear that foreground objects are “in the forefront of the game play as primary objects to be manipulated or used during game play” and that background objects are “outside the primary focus of game play and as unexpectedly interactive components.” Ex. 1002, 85. However, whether an object is “outside the primary focus of game play and as unexpectedly interactive components” is based solely on the subjective perspective of the user. That is, what one user may consider a primary focus or expected object, another might consider outside the primary focus and unexpected. As the Director made clear in the Remand Decision, it is “improper[]” to have a claim construction “based on the subjective perspective of a user.” Remand Dec. 7; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). Accordingly, we cannot and do not adopt that as our construction of the term background. Not finding a construction of “background” based on the intrinsic evidence, we turn to the extrinsic evidence. See Remand Dec. 7 (“[T]he Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.” (emphasis added)). Specifically, as part of the Decision Denying Institution, we considered various dictionary definitions of the word “background.” According to those definitions, “background” refers to “[t]he part of a pictorial representation that appears to be in the distance and that provides relief for the principal objects in the foreground.” Ex. 3002 (AMERICAN HERITAGE DICTIONARY); see also Ex. 3003 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM-WEBSTER DICTIONARY). Consistent with those dictionary definitions, we construe the term “background” to mean the part of a pictorial representation that is not in the foreground. The prosecution history provides more useful guidance as to what a “non-promotional” object is. As the applicant argued in the Amendment discussed above, a non-promotional object is one “which does not have an ‘area’ in which advertisements directly appear, but instead represents a ‘hot spot’ that, upon activation, causes ‘hidden promotional content’ to then appear.” Ex. 1002, 85–86. In other words, a non-promotional object does not display a promotional message unless the hotspot is activated. This understanding of the meaning of non-promotional is consistent with an earlier argument (Ex. 1002, 113–25) the applicant made during the prosecution of the ’089 patent.12 At that time, the applicant argued: In an exemplary embodiment, the location in-game may be represented by a non-promotional object, such as a blank chalk board depicted in the background of the gaming environment. See Applicant’s Specification at ¶ [0045]. Upon activating the hot spot (e.g., by throwing a dart at the chalk board), a promotional message may be drawn on the chalk board and displayed to the user. See id. In other words, Applicant’s amended claims 15 and 22, inter alia, may present promotional content once the game user activates, unknowingly, a “hot spot” associated with a non-promotional object—the non-promotional object is not an ordinary or visible place for advertisement, the 12 This argument was made on December 2, 2011, which is prior to the amendment adding the term background on July 15, 2013. Compare Ex. 1002, 117 (then pending claim 15 without the word “background”) with id. at 80 (amendment adding “background” to claim 15). user does not know that the object has a hidden hot spot, and the user does not know that activating the hidden “hot spot” will display promotional content. Ex. 1002, 122 (emphasis added).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Moreover, even if we did consider only the specific references addressed in the Preliminary Response, we would not reach a different outcome. Patent Owner focuses on a high-level comparison of the references. See Prelim. Resp. 13–19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”); Nokia of Am. Corp. v. Alexander Soto, IPR2023-00680, Paper 18 at 7 (PTAB Mar. 28, 2024) (Vidal) (determining the Board erred when “rather than identify material, substantive overlap between the arguments presented in the Petitions and those previously presented to the Office, the Board’s analysis relied on its discussion of high-level similarities but lacked detailed reasoning”); Wolfspeed, Inc. v . The Trustees of Purdue University, IPR2022-00761, Paper 13 at 7 (PTAB Mar. 30, 2023) (Vidal) (vacating the Board’s decision when the “analysis of the first part of the Advanced Bionics framework did not consider sufficiently the material differences between” the art the Office previously considered and the art the Petition cited). Nor were any of Petitioner’s Reply arguments improper. We expressly authorized Petitioner to respond to Patent Owner’s arguments that the prior art relied on in the Petition was substantially the same as prior art that was considered. Ex. 3005 (Email from the Board to the parties) (“Petitioner is authorized to file a preliminary reply brief addressing 1) Patent Owner’s arguments under 35 U.S.C. 325(d). . . .”). Moreover, given the facts of this proceeding, it is not reasonable to require Petitioner to anticipate “substantially the same prior art” arguments and address them in the Petition. Accordingly, Petitioner’s argument is a proper reply argument. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,688,089
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.