• Nuvei Technologies, Inc. v. Autoscribe CorporationInstitution denied
  PTAB · Jun 12, 2025 · IPR2025-00089 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Nuvei did not show a reasonable likelihood that claims 1–27 would have been obvious over either asserted combination.

  RulingsInstitution decision

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

    “providing” negative limitation of independent claim 1, and the similar negative limitations of independent claims 8, 15, 23, and 25. Accordingly, Nuvei has not shown a reasonable likelihood that it would prevail on its assertions that the subject matter of independent claims 1, 8, 15, 23, and 25 would have been obvious over the combined teachings of Stringfellow and Kloster.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or comparable field of study, and (2) at least two years’ experience working with and programming networked computer systems.” Pet. 9 (citing Ex. 1005 ¶ 36). Nuvei also argues that “[a]dditional education might substitute for some experience, and vice versa.” Id. In the Preliminary Response, Autoscribe does not address the level of skill in the art. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Nuvei’s proposed assessment of the level of ordinary skill in the art because it is consistent with both the ’621 patent and the asserted prior art, and it is supported by the testimony of Dr. Almeroth.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The supporting testimony from Nuvei’s declarant, Dr. Almeroth, on these issues fare no better. Dr. Almeroth provides no additional explanation beyond the arguments and evidence presented in the Petition to support Nuvei’s assertion that Kloster does not provide the payment data token to the payer during its token retrieval functions. See Ex. 1005 ¶ 100.” slip op. at 24

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

    “argument that Kloster does not teach the “without providing” negative limitation required by each independent claim. Nuvei appears to contend that Kloster teaches this limitation in two different ways—namely, through either a “call back URL” or “API calls by the merchant.” Pet. 50–51 (emphasis omitted) (quoting Ex. 1008 ¶¶ 15, 23) (citing Ex. 1008 ¶ 24). We address Nuvei’s contentions in turn.” slip op. at 21

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,620,621
• Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.

  RulingsInstitution decision

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

    “2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “presented in the petition . . . and any [preliminary] 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(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,814,071
• Wiz, Inc. v. Orca Security Ltd.Institution denied
  PTAB · May 5, 2025 · IPR2025-00095 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Orca disclaimed all challenged claims 1–18, so no trial could be instituted on them.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentOther

    “Based on our review of Exhibit 2002 and the USPTO’s public records, we conclude that a disclaimer of claims 1–18 of the ’855 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of April 24, 2025. Ex. 2002. Because we cannot institute an IPR based on disclaimed claims and all of the challenged claims of the ’855 patent have been disclaimed, no trial will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (Decision” slip op. at 3

  None
  Patents in suitUS 11,637,855
• Wiz, Inc. v. Orca Security Ltd.Institution denied
  PTAB · May 5, 2025 · IPR2025-00093 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Orca disclaimed all challenged claims 1–20, leaving no claims on which to institute IPR.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentOther

    “Based on our review of Exhibit 2002 and the USPTO’s public records, we conclude that a disclaimer of claims 1–20 of the ’257 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of April 24, 2025. Ex. 2002. Because we cannot institute an IPR based on disclaimed claims and all of the challenged claims of the ’257 patent have been disclaimed, no trial will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (Decision” slip op. at 3

  None
  Patents in suitUS 11,582,257
• Wiz, Inc. v. Orca Security Ltd.Institution denied
  PTAB · May 5, 2025 · IPR2025-00092 · APJ Garth D Baer · IPR · Institution

  The Board denied institution because Orca disclaimed all challenged claims 1–19 before institution.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentOther

    “Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and, if the statutory disclaimer is filed properly, “[n]o [IPR] will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the USPTO. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see also Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2

  Discretionary denial
  Patents in suitUS 11,516,231
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Apr 28, 2025 · IPR2024-01500 · APJ Neil T Powell · IPR · Institution

  Institution of IPR challenging claims 1–5 was denied because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). For the reasons that follow, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or an equivalent field, and two years of experience with cellular telecommunications, radio-access network architectures and protocols, and signal propagation in wireless networks.” Pet. 7 (citing Ex. 1003 ¶ 54). Petitioner further proposes that “[m]ore education can supplement practical experience and vice versa.” Id. (citing Ex. 1003 ¶ 54). 6 Elgamal, U.S. Patent No. 6,898,248 B1, issued May 24, 2005 (Ex. 1008, “Elgamal”). 7 Frank et al., U.S. Patent Application Publication No. 2003/0035469 A1, published Feb. 20, 2003 (Ex. 1006, “Frank”). 8 Zha et al., “Soft-Decision Successive Interference Cancellation CDMA Receiver with Amplitude Averaging and Robust to Timing Errors,” Proc. IEEE Global Telecommunications Conference, 2001 (GLOBECOM ’01), vol. 2, 2001, pp. 743–747 (Ex. 1010, “Zha”). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’703 patent and 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).” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “provide sufficiently persuasive evidence in support of its position that claim 1’s “decoders” has a meaning broad enough to correspond to Zha’s decision rule. Petitioner disputes Patent Owner’s understanding of claim 1’s “decoders” by arguing that “[Patent Owner] does not argue that the specification disclaims decoders that do not perform error correction, or otherwise expressly limits the claimed bank of decoders to error correction.” Prelim. Reply 6. In support of its position, Petitioner cites Dr. Min’s testimony that “[i]n my opinion, a [person of ordinary skill in the art] would have understood that the ‘decision rule’ would be implemented using a decoder, as decoders typically make bit decisions.” Ex. 1003 ¶ 178; Pet. 59. Dr. Min does not cite any objective evidence in support of this view. Ex. 1003 ¶ 178. In response, Patent Owner marshals intrinsic evidence, along with Dr. Caire’s testimony based on objective supporting evidence. Prelim. Resp. 47–48; Prelim. Sur-Reply 5–6. For example, arguing that all embodiments disclosed in the ’703 patent use error-correcting coding, Patent Owner emphasizes the ’703 patent’s statement that “the [’703 patent’s] specification states that ‘[t]he invention is based on an iterative decoding solution that exploits error correction codes.’” Prelim. Sur-Reply 6 (quoting Ex. 1001, 25:27–29 (emphasis added by Patent Owner)). Patent Owner also cites the Abstract of the ’703 patent, which states that “[t]he present invention provides Turbo-decoding for joint signal demodulation based on an iterative decoding solution that exploits error correction codes.” Ex. 1001, code (57); Prelim. Sur-Reply 6. Patent Owner also cites Dr. Caire’s testimony that “any reasonable understanding of a decoder is one that implements an error correction coding approach.” Ex. 2001 ¶ 98; Prelim. Resp. 47. Dr. Caire cite objective evidence that supports this view. Ex. 2001 ¶ 98 (citing Ex. 2003, 3; Ex. 2004, 11; Ex. 2005, 228). Weighing the parties’ arguments and evidence, we find Patent Owner’s more persuasive than Petitioner’s. Starting with the intrinsic evidence, Patent Owner’s citation of the ’703 patent’s repeated statements that the “invention . . . exploits error correction codes” is more persuasive than Petitioner’s argument that the ’703 patent does not disclaim other approaches. Prelim. Sur-Reply 6 (citing Ex. 1001, 25:27–29, code (57)); Prelim. Reply 6. Petitioner argues that certain background documents suggest decoders may have a broad meaning, but this attorney argument warrants less weight than Dr. Caire’s testimony. Prelim. Reply 7 (citing Ex. 2003, 18–20; Ex. 2004, 7, 9). Accordingly, in sum, Petitioner does not” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “In view of all the parties’ arguments and evidence, we do not find a reasonable likelihood of Petitioner prevailing on this issue. When questioning who exactly had rights to which specific inventions of Mr. McElwain’s, Petitioner glosses over the key, undisputed fact that Mr. McElwain assigned the invention of the ’703 patent to the exact same entity to which Brommer was assigned, specifically BAESI. Ex. 2012, 2; Ex. 2011, 2. Mr. McElwain did so shortly after BAE filed Mr. McElwain’s provisional application on April 14, 2003, which both parties treat as the ’703 patent’s date of invention. Ex. 2012, 2; Ex. 2013, 1; Prelim. Resp. 32; Prelim. Reply 1. This, in combination with Patent Owner’s evidence regarding Mr. McElwain’s EPIIA and BAE’s acquisition of Lockheed Martin’s Aerospace Electronics System Business, evinces that Mr. McElwain had an obligation on April 14, 2003, to assign the invention of the ’703 patent to BAESI. Exs. 2014–2016. As Patent Owner notes, Petitioner does not advance a reason that Mr. McElwain would not have been obligated on April 14, 2003, to assign the invention of the ’703 patent to BAESI, much less provide evidence that he was not so obligated. See generally Prelim. Reply; Prelim. Sur-Reply 2. In sum, weighing the parties’ arguments and evidence, we do not find that Petitioner has a reasonable likelihood of prevailing on its position that Brommer is prior art to the ’703 patent for purposes of obviousness. Accordingly, we do not find that Petitioner has demonstrated a reasonable likelihood of prevailing on any of its assertions that the claims of the ’703 patent would have been obvious over Brommer in combination with other references.” slip op. at 20

  § 103 obviousnesscites Phillips
  Patents in suitUS 7,463,703
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Apr 28, 2025 · IPR2025-00011 · APJ Neil T Powell · IPR · Institution

  The Board denied institution of IPR challenging claims 1–4 and 6–8, exercising § 314(a) discretion because the Fintiv factors favored denial.

  RulingsInstitution decision

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

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. 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. Id. at 6.” slip op. at 19

  • Expert testimonyPetitioner expert discountedOther

    “For example, citing Fuller’s disclosures of “signals,” Petitioner argues that “[a person of ordinary skill in the art] would have understood that each individual signal necessarily includes an amplitude, and that the M individual signals thus correspond to a plurality of individual amplitude estimates.” Pet. 31 (citing Ex. 1003 ¶ 99). Similarly, citing Fuller’s disclosure of “channel estimates,” Petitioner argues that “[a person of ordinary skill in the art] would have understood that the channel estimates include amplitude estimates, and that the estimated individual signals include at least estimated amplitudes.” Id. at 33 (citing Ex. 1003 ¶ 102). In support of these arguments, however, Petitioner cites Dr. Min’s testimony, which does not cite objective supporting evidence and, thus, warrants limited weight. Ex. 1003 ¶¶ 99, 102; see also 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 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or an equivalent field, and two years of experience with cellular telecommunications, radio-access network architectures and protocols, and signal propagation in wireless networks.” Pet. 6 (citing Ex. 1003 ¶ 56). Petitioner further proposes that “[m]ore education can supplement practical experience and vice versa.” Id. (citing Ex. 1003 ¶ 56). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’651 patent and 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).” slip op. at 9

  Discretionary denialcites Phillips
  Patents in suitUS 7,920,651
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Collision Communications, Inc.Institution denied
  PTAB · Apr 11, 2025 · IPR2025-00285 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims because the same claims, grounds, arguments, and evidence had already failed the reasonable-likelihood threshold in the Samsung IPR, and denied joinder.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2

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

    “35 U.S.C. § 315(c), which states as follows: 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. Because joinder under 35 U.S.C. § 315(c) is premised on an inter partes review having been instituted, and the Board did not institute review in the Samsung IPR to which Petitioner seeks to join, we deny the Motion for Joinder.” slip op. at 3

  None
  Patents in suitUS 6,947,505
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and 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).” slip op. at 10

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

    “Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,089,946
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [preliminary] 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(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and 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).” slip op. at 12

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

    “Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13

  • BurdenNot shown unpatentable

    “We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,814,071

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.