• Microsoft Corporation v. Eyesmatch Ltd.Instituted
  PTAB · Jun 11, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2024-00856.

  RulingsInstitution decision

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

    “III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. For the reasons given above, we are persuaded that Petitioner has demonstrated that permitting Petitioner to join the ’856 IPR would avoid duplication and promote the efficient resolution of both proceedings and is therefore in the interests of justice.” slip op. at 6

  • BurdenInstituted

    “III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5

  None
  Patents in suitUS 8,982,109
• Google, LLC. v. Escapex IP LLCInstituted
  PTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution

  The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.

  RulingsInstitution decision

  • 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.” 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, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8

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

    “Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 9

  • BurdenInstituted

    “We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16

  Claim constructioncites Phillips
  Patents in suitUS 10,474,687
• Microsoft Corporation v. Eyesmatch Ltd.Instituted
  PTAB · May 28, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Institution

  The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2025-00296 with IPR2024-00810.

  RulingsInstitution decision

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

    “II. DECISION The challenges to the ’110 patent’s claims in this Petition are identical to the challenges in the ’810 IPR’s petition. See, e.g., Pet. 6; ’810 IPR, Paper 1, 8. Additionally, in this proceeding, Patent Owner has not argued that the Petition’s challenges lack sufficient merit to institute trial. See, e.g., Notice 1. For the same reasons we explained in the ’810 Institution Decision, we institute inter partes review of all challenges in the Petition.” slip op. at 4

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. In this proceeding, we are persuaded that Petitioner has demonstrated that joinder with the ʼ810 IPR would avoid duplication and promote the efficient resolution of both proceedings.” slip op. at 5

  None
  Patents in suitUS 8,982,110
• Mediatek Inc. v. Daedalus Prime LLCInstituted
  PTAB · May 19, 2025 · IPR2025-00100 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1–24 on all petitioned grounds, finding a reasonable likelihood of prevailing and declining discretionary denial under Fintiv.

  RulingsInstitution decision

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

    “Petitioner or refute the testimony by Dr. Martin. On this record, we find for the reasons given that Petitioner has sufficiently demonstrated a motivation to combine Bugiel and Chou and to further combine those references with Tkacik, TLS-1.2, or both, with a reasonable expectation of success. Pet. 8– 13.” slip op. at 18

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

    “Bugiel with Chou and with Chou and TLS-1,2. Pet. 8. Petitioner asserts that “[i]t would have been obvious to implement Bugiel’s system using Chou’s HSM 20.” Id. Petitioner explains, “[a person of ordinary skill] would have understood both Chou and Bugiel relate to secure communication using cryptographic keys for encryption and decryption.” Id. Dr. Martin testifies that “[g]iven the express teachings in Bugiel and the ubiquity of the SSL/TLS communication protocol, a [person of ordinary skill] would have been motivated to review the relevant SSL/TLS protocol for more details regarding how to implement the TLS Handshake Protocol for generating cryptographic keys based on cryptographic key exchange.” Martin Decl. ¶ 77. He further testifies that a person of ordinary skill “would have understood that the SSL/TLS processes contemplated by Bugiel and TLS- 1.2 require hardware components.” Id. ¶ 78. He testifies that “[b]ecause Chou teaches an apparatus with hardware components that satisfy the requirements specified by Bugiel and TLS-1.2, a [person of ordinary skill] would have found it obvious to implement the techniques described in Bugiel, including TLS-1.2 as required by Bugiel, using Chou’s SOC apparatus.” Id. ¶ 80. He testifies that a person of ordinary skill “would have understood that the combination of Bugiel and Chou, and Bugiel and TLS-1.2 with Chou, would have been nothing more than combining known prior art elements according to understood methods to perform the well-known TLS handshake process using a secure hardware environment. This would have yielded predictable results in establishing secure, encrypted communication between a client mobile device and a server. A [person of ordinary skill] would have had an expectation of success in the result, as Bugiel contemplates using TLS-1.2 communication protocols and secure hardware to store protected keys and to encrypt and decrypt data, as taught by Chou.” Id. ¶ 81. Dr. Martin provides additional reasons motivating the combination of Bugiel and Chou, and Bugiel, Chou, and TLS-1.2. Id. ¶¶ 82–83.” slip op. at 16

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

    “Fintiv, Paper 11 at 5–6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent “would have had at least a bachelor’s degree in electrical engineering, computer science, computer engineer, or a similar field, and approximately two years of experience in a field related to cryptography and secure communications between network devices,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 3–4 (citing Martin Decl. ¶¶ 66–68). At this stage, Patent Owner does not respond to this contention. For the purpose of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’838 patent specification and the asserted prior art.” slip op. at 9

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,887,838
• Google LLC v. Security First Innovations, LLCAll claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Foster; the Board did not reach the instituted Orsini anticipation or obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the invention of the ’609 patent, “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use,” and that “[a] higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶¶ 37–38).” slip op. at 11

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

    “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)). slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Initially, we note that Petitioner’s challenge is based on the parties’ proposed district court constructions for “data set.” See Pet. 65–66. But neither party proposes a construction for “data chunks” in this proceeding. Notably, the 83-column Specification of the ’609 patent itself does not use the term “data chunks.” Even so, the meaning of “data chunks” is readily apparent from the plain language: the data chunks are generated “based on a data set,” and the claim defines the steps that comprise the chunk generation, including the relationship between the chunks and the data set. See Ex. 1001, 83:15–30; In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (In all aspects of claim construction, “the name of the game is the claim.” (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims–American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990))).” slip op. at 17

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

    “Petitioner argues, and we agree, that “it does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed [modification].” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016) (cited in Pet. Reply 14–15). Petitioner persuasively explains: [C]ontent-owner storage would not negate benefits of content-service providers (“CSPs”) storing Foster-encrypted content. [The skilled artisan] knew CSPs (e.g., cable-TV companies) often purchased/licensed content from content owners and then securely stored it before delivering to recipients. [Ex. 1099], 84-94. CSPs typically and beneficially encrypted and stored that content for repeated use (e.g., downloads by different customers) – rather than repeatedly encrypting it on-the-fly – and for backup purposes. Petition, 77-78 (citing EX1045, EX1050, EX1059-EX1060; [Ex. 1003], ¶¶206-213); [Ex. 1111], ¶¶102-114 (citing EX1073, [0043] (VOD “pre-encrypt[s]” and “stores the content”); EX1097, 2:31-53 (“real-time encryption [for VOD] poses much greater cost and space issues”); EX1075, 1:51-67; EX1105, [0034]-[0037]; EX1080, 2-7). Pet. Reply 15; see id. at 16–17 (“EX1060, e.g., describes prior-art VOD systems where CSP intermediary ‘servers . . . store all movies.’” (citing Ex. 1060 ¶¶ 7–8 (cited in Pet. 77)) (alteration in original)). As for Patent Owner’s allegation that Petitioner’s proposed modification to Foster would “compromise” Foster’s security, Petitioner argues, and we agree, that, “[b]eyond a conclusory expert declaration, [Patent Owner] offers no evidence that hacking risks or overall storage requirements would increase by storing content at a CSP/intermediary rather than a content owner.” Pet. Reply 17. Petitioner also argues, and we agree, “even if it required ‘increased cost and complexity’ to make CSP storage more secure, that does ‘not show that [the technique] was unknown or could not have practical applications,’ and thus does not support non-obviousness.” Id. at 17–18 (quoting In re Cree, 818 F.3d 694, 700–701 (Fed. Cir. 2016)); id. at 18 (“[I]t is a commonplace fact that design decisions entail making tradeoffs among multiple objectives.” (quoting Corephotonics, Ltd. v. Apple Inc., 2021 WL 4944471, at *6 (Fed. Cir. Oct. 25, 2021)); see Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine [or to modify].”). Although Patent Owner disputes whether a rational reason exists to modify Foster to arrive at the subject limitation (discussed above), Patent Owner otherwise does not dispute reasonable expectation of success in doing so. See generally PO Resp. 32–56.” slip op. at 25

  Patent outcomesUS 11,068,609 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,068,609
• Google LLC v. Security First Innovations, LLCSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17

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

    “Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21

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

    “Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25

  Patent outcomesUS 11,178,116 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 11,178,116
• Google LLC v. Security First Innovations, LLCAll claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15

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

    “Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9

  Patent outcomesUS 10,452,854 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,452,854
• Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 24, 2025 · IPR2024-01480 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution under § 314(a), citing the Fintiv factors, including the earlier trial date and the petition’s not particularly strong merits, for claims 1–3, 10–13, 17, and 20–22.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 4, 8 (quoting Ex. 2001, 5). We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the district court. Ex. 2001; Ex. 2007; Prelim. Resp. 8–9. The fact that the time-to-trial statistic is earlier than the scheduled trial date confirms that the scheduled trial date is credible and should be given weight. From this evidence, we are persuaded that we should rely on the scheduled trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “1. Analysis of Petitioner’s Challenges a) Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces. Additional education can substitute for less work experience, and vice versa. Pet. 14; see Ex. 1003 ¶ 41. Patent Owner does not dispute or comment on this proposal or propose an alternate level of ordinary skill in the art. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art, which is consistent with the evidence of record, including the asserted prior art and ’103 patent.” slip op. at 14

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

    “same standard used in district courts, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Neither Petitioner nor Patent Owner asserts that any claim term requires claim construction (Pet. 14–15; Prelim. Resp.) and we do not discern that any claim term requires construction to arrive at our conclusions herein. c)” slip op. at 14

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

    “2. Conclusion Regarding the Merits The discussion above identifies weaknesses in the Petition that we have considered in our evaluation of Fintiv factors. While we do not make a determination regarding whether the Petition shows that there is a reasonable likelihood of prevailing were we to institute, for the reasons given, we determine that this Petition does not present particularly strong merits. G. Weighing the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 22

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 9,852,103
• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.

  RulingsInstitution decision

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

    “partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15

  • Skill levelDecided for patent owner

    “Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,856,520
• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01481 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), based on its Fintiv analysis, including the earlier district court trial date and weakness in the merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “date in the Lenovo Group case as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors discretionary denial of the Petition.” slip op. at 11

  • Skill levelSkill level board ownOther

    “patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces.” Pet. 6. Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications.” Prelim. Resp. 6–7. The differences between the definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any specialized constructions are necessary.” Pet. 6. Patent Owner “does not disagree.” Prelim. Resp. 6. However, Petitioner’s challenge raises an implicit claim construction issue not addressed in the Petition that we discuss in our analysis below.” slip op. at 15

  • BurdenNot reached

    “example, claim 11 recites “receiving a synchronization symbol by a receiver indicating a packet type, each packet type having a different synchronization symbol.” Ex. 1001, 37:53–55. The other independent claims challenged in the Petition are similar in their recitation of a “synchronization symbol.” See id. at 37:9 (claim 1), 38:26–27 (claim 19). Petitioner argues this limitation is disclosed by Auld in view of MPEG-2 Part. 1. Pet. 15–16. Citing Figure 5 of Auld, reproduced in Section IV.C.1, supra, Petitioner asserts that “[t]he ‘sync codes’ in Auld consist of sequences of symbols that are used for synchronization, and therefore qualify as synchronization symbols.” Id. at 17. Patent Owner responds that “what the Petitioners identified as a ‘synchronization symbol’ [in Auld] is in what they have identified as a ‘packet of (or having) symbols.’” Prelim. Resp. 1. In contrast, “[i]n the specification and claims of the ’798 Patent, the claimed ‘synchronization symbol’ is separate from, and precedes, the claimed ‘packet of (or having) symbols.’” Prelim. Resp. 1. In disputing Petitioner’s identification in Auld of a synchronization symbol as claimed, Patent Owner points to Figure 9A of the ’798 patent (reproduced in Section II.C, supra), showing synchronization primitives 901 and 905 as separate from and transmitted before packets 902 and 907, respectively. Id. at 4. Patent Owner also relies on the description of the Figure 9A embodiment in the ’798 patent specification. Id. at 3–5. That description places transmission of the synchronization primitive encoded with the patent type before the control packet in the transmission sequence:” slip op. at 18

  Claim constructionDiscretionary denial
  Patents in suitUS 7,746,798

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.