- Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentablePTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ treadmill to add both “Ray’s motivational image that showed a thinner image of the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. 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 32
Patent outcomesUS 10,032,227 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,032,227 - PTAB · Oct 22, 2024 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR of claims 10–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 10–20 of the ’268 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’268 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Nonetheless, Petitioner’s stipulation mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Thus, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 48
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“recognizing the heterogeneity of vehicles, one would have been motivated to determine applicable settings (e.g., command codes) that are compatible with settings that are settable in the selected vehicle but would avoid determining applicable settings that are incompatible with settings that are settable in the selected vehicle, ensuring that Xiao’s server 118 does not attempt to command vehicles to do things they cannot do, potentially resulting in unexpected and/or undesired vehicle configurations or errors. Pet. 49; Ex. 1009 ¶ 191. Petitioner adds that “[a]voiding such undesirable effects would be a predictable result of implementing Hayashi’s known method of determining compatibility.” Id. For the purposes of institution, Petitioner’s arguments and Dr. Almeroth’s testimony are better supported by the Xiao and Hayashi. Nevertheless, the parties are encouraged to further develop the record on this issue after institution. After review of the arguments and evidence currently of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that Xiao in combination with Hayashi renders independent claim 10 obvious.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203 - PTAB · Sep 5, 2024 · IPR2024-00695 · APJ Norman H Beamer · IPR · Institution
The Board instituted review of claims 1–13 on all grounds, finding compelling evidence of obviousness over Perlman for claims 1 and 12 and a reasonable likelihood of success on the remaining claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The second Fintiv factor strongly favors denial, the third Fintiv factor somewhat favors denial, the first and fifth factors are neutral, and the fourth factor somewhat weighs against denial. Accordingly, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). We note that the compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge based on a single close reference at least for independent claims 1 and 12. Perlman’s disclosure provides clear and robust teachings for the limitations of those claims. Patent Owner’s only arguments on the merits, directed to two limitations common to both independent claims, are premised on an interpretation of “transmitting . . . data streams independently over a network” that has no basis in the record. “A challenge can only ‘plainly lead to a conclusion that one or more claims are unpatentable’ [Guidance Memo 5] if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR202101064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (precedential). We have so determined in regard to at least independent claims 1 and 12, and therefore decline to deny institution based on the Fintiv factors.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge based on a single close reference at least for independent claims 1 and 12. Perlman’s disclosure provides clear and robust teachings for the limitations of those claims. Patent Owner’s only arguments on the merits, directed to two limitations common to both independent claims, are premised on an interpretation of “transmitting . . . data streams independently over a network” that has no basis in the record.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 16 (citing Freedman Decl. ¶¶ 20–22). Patent Owner does not dispute Petitioner’s definition for purposes of its preliminary response. Prelim. Resp. 15. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on this record, we determine that the claim requirement at issue requires the parallel encoded data streams to be transmitted such that the encoded tiles arrive at the destination for separate decoding and recombination to reproduce the image. The embodiments described in the ’426 specification describe nothing more. The portions of Perlman on which Petitioner relies amply demonstrate the same behavior. It is not necessary to determine the precise method by which the separately encoded data tiles are transmitted, as long as they are separately received, decoded, and recombined at their destination. Patent Owner’s example illustrates this: whether four people travel from Dallas to Washington, D.C. in one, two, three or four cars does not change the fact that each person retains their individual identity during the journey, just like the encoded tiles of Perlman during transmission. Whatever additional, unexplained requirements Patent Owner would attach to the term “independently” in this context has no reasonable basis.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,649,426 - PTAB · Aug 13, 2024 · IPR2024-00901 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–9, 11–19, and 21–24 on all petition grounds and granted fuboTV’s motion to join the Aylo IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues in the instant Petition are identical to those in the Aylo IPR, and for the same reasons stated in our Decision on Institution in the Aylo IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Aylo IPR, Paper 8.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 11,677,798 - PTAB · Aug 13, 2024 · IPR2024-00904 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, 14–19, 21–25, and 27–29 on all petitioned grounds, and granted fuboTV’s motion to join the Aylo IPR.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’680 patent. Accordingly, we institute inter partes review of claims 1, 2, 4–12, 14–19, 21–25, and 27–29 of the ’680 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 10,951,680 - PTAB · Aug 13, 2024 · IPR2024-00905 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on all challenged claims and grounds and granted fuboTV’s motion to join the Aylo IPR, subject to participation limits.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’555 patent. Accordingly, we institute inter partes review of claims 1, 3–5, 7–11, 13–20, and 22–27 of the ’555 patent. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address how briefing and/or discovery may be simplified to minimize schedule impact. Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 10,469,555 - PTAB · Aug 13, 2024 · IPR2024-00903 · APJ John A Hudalla · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 8, 10–14, 16–20, 22–28, and 30 on all petition grounds and joined fuboTV to IPR2024-00045.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’554 patent. Accordingly, we institute inter partes review of claims 1–5, 7, 8, 10–14, 16–20, 22–28, and 30 of the ’554 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 10,469,554 - PTAB · Aug 13, 2024 · IPR2024-00902 · APJ John A Hudalla · IPR · Institution
The Board instituted review of claims 1, 3–12, 14–20, 22–25, and 27–29 on all petition grounds and granted fuboTV’s motion to join the Aylo IPR.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see 37 C.F.R. § 42.4 (2023). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’138 patent. Accordingly, we institute inter partes review of claims 1, 3–12, 14–20, 22–25, and 27–29 of the ’138 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Aylo IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Henry Houh. Mot., passim; Ex. 1003. Petitioner also represents that it “agrees to take an understudy role” so that “the parties can comply with the trial schedule assigned to the Instituted Aylo IPR without any duplicative efforts by the Board or the Patent Owner.” Mot. 7–8.” slip op. at 10
NonePatents in suitUS 11,470,138 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00519 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 1–21 under § 314(a), finding the General Plastic factors favored or were neutral toward discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is that Petitioner discovered Leaning almost three months after it filed the petition in IPR2024-00048. See Pet. 63–64. Petitioner makes no attempt to 10 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 64) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00048. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 8,868,772
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.