- PTAB · Aug 27, 2025 · IPR2025-00574 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on claim 1 over Choe and Workman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Skill levelOther
“would have had a Bachelor’s in Computer Science with a focus on computer/machine vision, and at least two years of experience with each of: (1) machine learning (including neural network) methods as applied to machine/computer vision and (2) classical machine/computer vision algorithms (e.g., edge detection, line identification, computation of camera parameters from horizon line, etc.)” and that additional education “could serve as a substitute for the experience requirement.” Pet. 7–8 (citing Ex. 1003 ¶ 77). Patent Owner disagrees with Petitioner’s definition and asserts that a POSITA “would have a bachelor’s degree in engineering or computer science with one- or two-years training and/or experience in design of software for camera/sensor systems in the automotive industry.” Prelim. Resp. 12 (citing Ex. 2003 (Declaration of Scott Andrews) ¶ 35). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should the parties continue to disagree regarding the level of ordinary skill in the art during trial, we encourage the parties to explain how an automotive-focused definition, or the lack thereof, would affect any obviousness analysis in our final written decision. B. slip op. at 5
- Expert testimonyOther
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,875,580 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - Xilinx, Inc. v. Polaris Innovations LimitedInstitution deniedPTAB · Sep 18, 2023 · IPR2023-00517 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because neither Slemmer alone nor Slemmer with Gasbarro showed a reasonable likelihood of proving the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’473 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’473 patent, the types of problems and solutions described in the ’473 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“because it is not dispositive—the art teaches the claims under any construction.” Pet. 9. Patent Owner addresses constructions for two claim terms recited in claims 1 and 20—“outputting data to said bus that is other than data which would be output to said bus during normal operation” and “outputting no data to the bus.” Prelim. Resp. 11–16. Patent Owner asserts that the term “outputting data to said bus that is other than data which would be output to said bus during normal operation” should be construed to mean “instead of the data which would be output to the bus by the circuit component during normal operation, outputting data to the bus that is other than the data which would be output to the bus during normal operation.” Id. at 11–12. As for the claim term “outputting no data to the bus,” Patent Owner argues that the term should be interpreted to mean “outputting no data to the bus when and so long as the circuit component is being tested.” Id. at 12–16. Based on the record presented, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“not teach “outputting no data to said bus” “during testing” as recited in claim 1 (limitation [1.3]) or “while testing” as recited in claim 20 (limitation [20.3]). Prelim. Resp. 29–34. We agree with Patent Owner that none of the operations in Figure 9 of Slemmer cited by Petitioner describe any operation performed “during testing” or “while testing,” as recited in limitation [1.3] or limitation [20.3]. As discussed above in Section III.C.2, Slemmer describes that line T is used to enable the special test mode “prior to such time as special test operations are performed.” Ex. 1005, 35:22–30 (emphasis added). Slemmer also describes that “upon the entry into a special test mode at time t3 of FIG. 9, line T is driven by test mode enable circuitry 29 to a high logic level.” Id. at 36:22–24 (emphasis added). Slemmer further describes that “with line 32 from parallel test circuitry 28 remains high (i.e., the parallel test either passed, or has not taken place),” terminals DQ “go into an active state at time t4” to present a low impedance state. Id. at 36:26–32 (emphasis added). Thus, Slemmer discloses that the enabling of the special test mode at time t3 or time t4 described in Figure 9—which Petitioner relies on as teaching “outputting no data to said bus” (at time t3) and “outputting data to said bus that is other than data which would be output to said bus during normal operation” (at time t4)—takes place before the test operations are performed.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,701,473 - PTAB · Sep 15, 2023 · IPR2023-00516 · APJ Minn Chung · IPR · Institution
The Board instituted review of claims 1, 2, and 8–13 on all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized 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.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’589 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Melvin, Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the relevant time would have had “a Bachelor’s degree in Electrical Engineering or Computer Science and two years of experience” or “equivalent education, work, or experience in this field.” Pet. 21 (citing Ex. 1003 ¶¶ 31–34). According to Dr. Melvin, “[m]ore education could substitute for experience, and vice versa.” Ex. 1003 ¶ 33. Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’589 patent, the types of problems and solutions described in the ’589 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “construction of terms is unnecessary because it is not dispositive to this case—the art teaches the limitations under any construction under the Phillips standard.” Pet. 21. Patent Owner states that we need not construe any claim term for purposes of this Decision. See Prelim. Resp. 11. Based on the record presented, we need not construe any claim term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. Asserted Grounds of Unpatentability Based on Lee or the Combination of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivation to combine the references because “[w]hile Lee does expressly illustrate the ‘circuitry’ that is initialized by the reset signal ϕRST output from its initialization circuit, Iketani illustrates and describes in detail the various circuits, including the control circuit, that receive and are initialized by such an initialization signal.” Pet. 59 (emphasis added) (citing Ex. 1003 ¶ 140). Petitioner further asserts that the proposed combination “amounts to a simple substitution of one component (i.e., Lee’s initialization circuit) for another (i.e., Iketani’s power on reset circuit), and a POSITA would have understood that this substitution would yield predicable results.” Id. at 61 (citing Ex. 1003 ¶ 143).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,589 - PTAB · Sep 14, 2023 · IPR2023-00513 · APJ Barbara A Parvis · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 5, 6, 9, and 10 on all petitioned grounds, finding a reasonable likelihood of unpatentability over Bains and JESD79-2A.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i) Conclusion—Claim 1 After consideration of the arguments and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Bains and JESD79-2A teaches all recitations in claim 1. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made 6 In light of our determination, we need not making findings as to whether Bains alone teaches element 1.6. Petitioner’s proposed modifications. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success also are sufficient for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing at this early stage. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Bains and JESD79-2A.” slip op. at 29
- Skill levelSkill level petitioner adoptedOther
“We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, on the current record, we preliminarily find Petitioner’s proposal is consistent with the level of skill reflected in the ’523 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We, therefore, adopt Petitioner’s proposal, with the “at least” phrase omitted.” slip op. at 8
- BurdenInstituted
“early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Bains and JESD79-2A teaches all recitations in claim 1. Also, at this juncture, we are persuaded that Petitioner has articulated sufficiently persuasive reasoning, based on the evidence of record, as to why one of ordinary skill in the art would have made 6 In light of our determination, we need not making findings as to whether Bains alone teaches element 1.6. Petitioner’s proposed modifications. Petitioner’s arguments that a person having ordinary skill in the art would have had a reasonable expectation of success also are sufficient for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing at this early stage. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Bains and JESD79-2A.” slip op. at 29
- Expert testimonyOther
“articulated reasons with rational underpinnings, especially as to the relevant features of the claims.” Prelim. Resp. 37. At this stage in the proceeding, we find that Petitioner’s argument contains sufficient specificity with respect to elements 1.5 and 1.6. Pet. 29–33, 49–60. For instance, we find that Petitioner’s fifth argument and Dr. Baker’s related testimony that the proposed combination would have permitted “for more complex termination schemes and more customizable termination” (see, e.g., Pet. 50; Ex. 1003 ¶¶ 124–125) relates to customizable termination and element 1.5 requires that the control circuit “selectively terminate the terminal . . . in response to the termination signal.” Patent Owner also argues that “[n]either the Petition, nor Dr. Baker’s declaration, provides any support as to how a POSITA would implement the ODT pin disclosed in JESD79-2A with the memory system of Bains.” Prelim. Resp. 37. Patent Owner argues that “JESD79-2A and Bains have distinct control schemes for the resistor switches in the ODT.” Id. at 37–38. Petitioner provides detailed explanations of how the teachings of Bains and JESD79-2A would have been combined. Pet. 54–56, 59–60. Petitioner also presents arguments that Bains and JESD79-2A teach similar termination circuits. Pet. 50–53, 55. Based on the preliminary record, we find that Petitioner explains sufficiently for purposes of institution how the teachings of Bains and JESD79-2A would have been combined and provides sufficient argument and evidence preliminarily showing that the ordinary skilled artisan would have had reasonable expectation of success.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,523 - PTAB · Sep 1, 2023 · IPR2023-00733 · APJ Larry J Hume · IPR · Institution
The Board instituted inter partes review of claims 1–24 on five Heil-based grounds and granted Cisco et al.’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of the identity of the issues in the instant Petition and the petition in the Google IPR and the already-considered arguments that Patent Owner made in the Google IPR, we determine that this proceeding warrants institution on the grounds presented in the Petition for the same reasons stated in our Decision on Institution in the Google IPR. See IPR2023- 00120, Paper 7. Accordingly, we proceed with the IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We find that Petitioner timely filed its Joinder Motion in accordance with 37 C.F.R. § 42.122(b). We further determine that Petitioner has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition in the Google IPR; (2) contains the same grounds based on the same evidence; and (3) relies on the same declaration of Dr. Paul Franzon, Ph.D. Mot. 1, 3–9; Ex. 1004. Petitioner also represents that it “agrees to take an ‘understudy’ role.” Mot. 8. Petitioner clarifies that, “[o]nly if Google ceases participation in the proceeding . . . Petitioner would assume a primary role, meaning it would take over the role previously filled by Google” Id. at 9.” slip op. at 5
NonePatents in suitUS 10,154,092 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00577 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’048 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 13–18.7 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“same arguments as those included in its preliminary response filed in the Apple IPR. Compare Prelim. Resp., with Apple IPR, Paper 6 at 1–2, 8–59. Although the Preliminary Response additionally incorporates Patent Owner’s arguments regarding discretionary denial under 35 U.S.C. § 325(d) from Patent Owner’s Preliminary Sur-reply in the Apple IPR (compare Prelim. Resp. 2–7, with Apple IPR, Paper 8 at 1–6), no new arguments are presented by Patent Owner’s Preliminary Response in this proceeding with respect to discretionary denial under § 325(d) or the patentability of the challenged claims.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that: Petitioner will: 1. Adhere to all applicable deadlines in the Apple IPR; 2. Submit “consolidated” filings with the Apple, as set forth above in the statement of precise relief requested; 3. Refrain from requesting or reserving any additional depositions or deposition time; 4. Refrain from requesting or reserving additional oral hearing time; and 5. Assume a second-chair role as long as Apple remains in the proceeding. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 8,881,048 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00579 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,304,654
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.