- PTAB · Jun 5, 2025 · IPR2025-00083 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR on all grounds for claims 1–9; the Board found a reasonable likelihood that claims 1–9 are obvious over Takeda and Yan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Contrary to Patent Owner’s arguments, the Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“early stage, we find that Petitioner has shown sufficiently, for purposes of institution, that the combination of Takeda and Yan teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Takeda and Yan for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s evidence. Based on the record at this preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Takeda and Yan.” slip op. at 27
- Skill levelSkill level petitioner adoptedOther
“had “a bachelor’s degree in electrical engineering, computer engineering, or a related discipline, knowledge of the relevant 3GPP standards” and “at least 2 years of experience working in a field involving wireless communications.” Pet. 10 (citing Ex. 1002 ¶¶ 38–40). Petitioner asserts a “person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. Petitioner also asserts a “person with less than 2 years of experience working in a field involving wireless communications could still qualify if the person has additional education that compensate[s] for their lesser experience.” Id. Patent Owner does not dispute Petitioner’s level of skill at this preliminary juncture. See generally Prelim. Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this early stage, neither party provides an express construction for any claim term and no express construction is necessary to resolve the conflict at this stage of the proceeding. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We, therefore, do not provide an express construction for any term at this preliminary stage in the proceeding. D. Asserted Obviousness of Claims 1–9 over Takeda and Yan” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,638,463 - PTAB · May 14, 2025 · IPR2025-00021 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court proceeding to the Northern District of California (Ex[.] 1036[,] 8).” Pet. 73. However, on March 25, 2025, the District Court denied the motion to transfer. Ex. 2026. Thus, we find that factor 2 weighs in favor of exercising discretion.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree with Patent Owner on this record. The language of claim 1 recites “location access rights of said device from said first wireless device.” The claim language does not limit the location access rights to be of only the one other device, at the exclusion of other devices. The ordinary and customary meaning of “location access rights of said device from said first wireless device” encompasses rights that allow other devices, in addition to the recited device, to access location information. The disclosure in the written description is consistent with the ordinary and customary meaning. Although the written description states that an object of the invention is to provide a security feature which allows a user to limit or deny access to a particular user, the written description discusses other purposes served by the assignment of access rights. For example, the written description discloses that “[u]sers may be added, individually or in groups, to a list of users with location access rights to a specific user by that specific user. A specific user may, at any time, modify, delete, or add users allowed to access his or her location.” Ex. 1001, 3:22- 26. The written description further discloses that “a user may organize his/her user list into groups and assign access rights to that group (e.g., family member user group, close friend user group).” Id. at 13:9–12. The fact that the written description of the ’039 patent sets forth multiple objectives to be served by the access rights confirms that these terms should not be construed as limited to a single device. Phillips, 415 F.3d at 1327. Further, because the written description here includes an embodiment where a user assigns access rights to a group, we are persuaded that the scope of the disputed claim terms encompasses a group permission. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). At this stage, we interpret the scope of the “location access rights of said device from said first wireless device” to encompass at least the disclosed embodiment of assigning access rights to a group. Ex. 1001, 13:9– 12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have made Petitioner’s proposed combination of “Degnbol’s disclosure of both selection of location-based events and manual entry using the handset of the phone with Sheha, to improve user ease, given that such techniques were well-known and conventional to POSAs at the time of alleged invention.” Pet. 18 (citing Ex. 1003 ¶ 132). Degnbol describes that “[i]t is an advantage of the present invention that user ‘A’ can be alerted when user ‘B’ arrives or leaves the defined location(s) or area(s)” so as “to enable user ‘A’ to know in advance the proximity or approximate whereabouts of user ‘B’ before possibly acting upon this information by contacting user ‘B’ — or allowing ‘B’ to contact ‘A.’” Ex. 1035, 3:23–27. At this preliminary stage, we find that Petitioner provides sufficient rationale to combine the teachings of Sheha, Degnbol, and McNulty for purposes of institution. Based on the evidence and arguments currently of record, we find that Petitioner demonstrates sufficiently for purposes of institution that the Sheha, Degnbol, and McNulty combination teaches the features recited in claim elements [1D] through [1F] and Petitioner provides sufficient rationale to make its proposed combination. We find that Patent Owner’s arguments do not undermine Petitioner’s showing. c) 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 Sheha, Degnbol, and McNulty teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Sheha, Degnbol, and McNulty for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing. Based on the record at this preliminary stage, 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 Sheha, Degnbol, and McNulty.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,096,039 - PTAB · May 12, 2025 · IPR2025-00124 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–46 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“WITHOUT PREJUDICE to refiling of the same within fourteen (14) days following the PTAB’s institution decision on the last of the pending IPRs” (Ex. 2008, 3), we decline to speculate whether the district court will grant a stay. Thus, we find that factor 1 is neutral. slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the arguments and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’575 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’575 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar degree, with one or two years of experience with wireless networks and devices, such as cellphones and personal digital assistants (‘PDAs’), as well as wireless positioning technologies, such as GPS or triangulation,” and that “[m]ore education could compensate for less practical experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 50–54). At this stage of the proceeding, Patent Owner does not challenge the level of ordinary skill in the art proposed by Petitioner’s expert. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’575 patent specification and the prior art.5” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner on this record. The language of claim 1, quoted above, recites “changing, at the direction of said first wireless telephone, a list of users on said remote server for a profile associated with said first wireless telephone that are allowed to access said location, wherein each user of said list of users is representative of one of a plurality of wireless telephones.” Ex. 1001, 12:65–13:3. The recitation of “said location” derives antecedent basis from element [1A], which recites “obtaining a location of a first wireless telephone,” thus “said location” in element [1C] is the location of the first wireless telephone. Id. at 12:62.7 The claim language does not limit access to the location of the first telephone to one other device, at the exclusion of other devices. Indeed, the claim language specifically recites that “a list of users” are changed “for a profile associated with said first wireless telephone” and that “each user of said list of users is representative of one of a plurality of wireless telephones.” Ex. 1001, 12:65– 13:3 (emphases added). The ordinary and customary meaning of “changing, at the direction of said first wireless telephone, a list of users on said remote server for a profile associated with said first wireless telephone that are allowed to access” to the location of the first wireless device “wherein each user of said list of users is representative of one of a plurality of wireless telephones” (Ex. 1001, 12:65–13:3) encompasses allowing “a list of users,” each having a telephone, access to the location of the “first wireless telephone” and further encompasses allowing other telephones, in addition to the recited plurality of wireless telephones access to the location of the first wireless telephone.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,374,575 - PTAB · Apr 25, 2025 · IPR2025-00036 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of IPR challenging claims 1–18, exercising § 314(a) discretion under Fintiv because the parallel district court case favored efficient and timely resolution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We are not swayed by Petitioner’s speculation as to the trial date for the parallel district court proceeding as well as arguments regarding trial dates for the other two district court proceedings. Due to the actual trial date of the parallel district court proceeding having been set to occur more than seven months before an expected final written decision in this proceeding, as well as a projected trial date based on time-to-trial statistics of more than six months before an expected final written decision, we determine that the considerations of the second Fintiv factor weigh in favor of exercising discretion to deny institution of inter partes review.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“factors. Because the analysis is fact-driven and we take a holistic view of the factors, no single factor is determinative of whether we exercise discretion to deny institution under § 314(a). The parallel district court trial date set more than six months before an expected final written decision and the significant investment by the court and parties in the parallel district court proceeding weigh in favor of exercising discretion to deny institution of inter partes review. Petitioner’s stipulation, however, allays to some extent concerns regarding duplication of efforts and the possibility of conflicting decisions and weighs against exercising discretion to deny institution of inter partes review. Of the remaining factors, we find only that Petitioner and defendant being the same to weigh in favor exercising discretion to deny institution of inter partes review. After careful consideration and holistically balancing all of the considerations of the Fintiv factors, on this record, we determine that the evidence before us warrants exercising discretion to deny institution of inter partes review. III. CONCLUSION We exercise discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18
Discretionary denialPatents in suitUS 11,627,631 - PTAB · Apr 25, 2025 · IPR2025-00037 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution of inter partes review of claims 1, 2, 4, 8, 9, and 11, exercising discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parallel district court proceeding as well as arguments regarding potential trial dates for the other two district court proceedings. Due to the actual trial date of the parallel district court proceeding having been set to occur more than seven months before an expected final written decision in this proceeding, as well as a projected trial date based on time-to-trial statistics of more than six months before an expected final written decision, we determine that the considerations of the second Fintiv factor weigh in favor of exercising discretion to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“Accordingly, we determine that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review. III. CONCLUSION For the foregoing reasons, the evidence of record favors exercising our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a). IV. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 16
Discretionary denialPatents in suitUS 10,616,932 - Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Apr 11, 2025 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Remand
On remand, the Board held claim 12 unpatentable over Grotmol and Hickman and denied the motion to amend because proposed substitute claims 21–29 were unpatentable.
RulingsRemand decision- RemandOther
“Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Written Decision regarding the level of ordinary skill in the art. See generally DR Req. Upon consideration of the full record including the arguments in Patent Owner’s Request for Director Review, we maintain that determination here. More specifically, considering the subject matter of the ’344 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. See 2024 Final Dec. 10–11. Accordingly, with that exception, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“the differences as compared to claim 1, including those findings and determinations set forth in a section of the 2024 Final Written Decision titled “Overview—Claims 6, 11, and 12” (id. at 65–67) and in the sections titled “Claim 12” and “Conclusion—Claims 6, 11, and 12” (id. at 83–86). Further, based on the complete record now before us, including Patent Owner’s Request for Director Review, for the reasons given in our 2024 Final Written Decision and our additional reasons given herein, we determine that Petitioner has shown by a preponderance of the evidence that the Grotmol and Hickman combination teaches the limitations of claim 12.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3
Patent outcomesUS 11,238,344 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,238,344 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Mullen Industries LLCInstitutedPTAB · Mar 31, 2025 · IPR2024-01472 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR on claims 1–39, finding a reasonable likelihood that the challenged claims are unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Petitioner that much work remains in the district court case as it relates to invalidity because discovery is in its early stages and a Markman hearing has not yet occurred. We also agree with Petitioner, that Petitioner’s diligence in filing its Petition (a) less than five months after receiving Patent Owner’s infringement contentions and (b) prior to the parties briefing claim construction issues weighs against exercising discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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; see 37 C.F.R. § 42.4. Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of claims 1–39 of the ’633 patent. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (citing Ex. 1002 ¶¶ 25–29). Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us. For purposes of this Decision, we apply Petitioner’s statement as our definition of a person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“to resolve the issues in the Petition. Pet. 8. In contrast, Patent Owner contends that the claim term “said first event and said second event,” and the claim term “said device includes motion sensing operable to distinguish between a plurality of different types of motion” require express construction. Prelim. Resp. 5–14. We do not need to resolve this dispute, because even under Patent Owner’s narrower constructions, Petitioner has shown a reasonable likelihood of success that at least one claim is unpatentable, as discussed below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,190,633 - PTAB · Mar 17, 2025 · IPR2024-01311 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 16–30 on all asserted grounds, finding a reasonable likelihood that Genius Sports would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the challenged claims of the ’218 patent have an apparent effective filing date after March 16, 2013, the AIA version of § 103 applies. Ex. 1009, codes (22), (60), (63). Our determinations and findings herein would not change if the pre-AIA provisions applied. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Parallel petitionsInstituted
“The Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, guides that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. Because we agree with Petitioner’s arguments with respect to the claims and the identity of the prior art used, we consider the merits of the instant petition.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’218 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’218 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture. Pet. 17–18 (citing Ex. 1001 ¶¶ 72–76). Petitioner additionally asserts that, “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. at 18. Patent Owner asserts: A person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols. Prelim. Resp. 8 (citing Ex. 2001 ¶ 96). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Jan 27, 2025 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR of claims 1–21 on all petitioned challenges after finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Factor 1 is neutral, Factors 2 and 5 favor discretionary denial, and Factors 3 and 4 weighs against discretionary denial. As set forth above, we determine that balance of the first five Fintiv factors do not favor discretionary denial, and thus, we need not 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.”). 7. Fintiv Determination The balance of all Fintiv factors do not favor the exercise of our discretionary powers to deny institution. Therefore, we determine that discretionary denial is not appropriate in this case.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics” or “AB”). Under the first prong of that framework, we must determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we turn to the second prong which focuses on whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“of at least Oct. 25, 2013. Prelim. Resp. 47–48. Patent Owner does not assert that any of petitioner’s references fail to qualify as prior art, except Kleve. Patent Owner asserts that “Kleve is not ‘prior art consisting of patents or printed publications’ as required by § 311(b).” Id. at 48. Although Patent Owner concedes that Kleve is a patent publication, Patent Owner argues it is not prior art consisting of a patent, and Petitioner has not shown Kleve was publicly available before its publication date of May 8, 2014. Id. (citing Ex. 1005, 1). Furthermore, Patent Owner “notes that this issue is currently on appeal before the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., No. 2023-2346 (Fed. Cir.).” Prelim. Resp. 48–49 n. 4; Prelim. Sur-reply 5. The Federal Circuit recently issued a decision in Lynk Labs and found that “a published patent application can be deemed prior art in an IPR as of the application’s filing date.” Lynk Labs, Inc., No. 2023-2346 (Fed. Cir. Jan. 14, 2025) (affirming the Board’s holding that under § 102, applicable “printed publications” include published applications under § 102(e)(1)). Accordingly, in view of the Federal Circuit’s decision, we are not persuaded by Patent Owner’s argument, which is contrary to the law applied by PTAB.” slip op. at 31
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,738,659 - Directv, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Jan 22, 2025 · IPR2024-01061 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of prevailing, and denied joinder to the non-instituted DISH Network IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the same reasons discussed in our Decision Denying Institution of the DISH Network IPR, Paper 14, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder is only permissible, however, when the inter partes review Petitioner seeks to join has been instituted. 35 U.S.C. § 315(c). As the DISH Network IPR has not been instituted, we do not grant Petitioner’s Motion for Joinder.” slip op. at 3
NonePatents in suitUS 7,889,759
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.