- Orca Security Ltd. v. Wiz, Inc.Institution deniedPTAB · Dec 15, 2025 · IPR2025-01086 · APJ Lisa A Murray · IPR · Institution
The Board denied institution on all challenged claims because Orca did not show a reasonable likelihood of prevailing, based on its unexplained inconsistent positions on a claim term.
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). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review of the challenged claims. B. Real Parties in Interest” slip op. at 2
- Prior constructionPrior construction not adoptedDecided for patent owner
“The Board has recently clarified that “[s]imply noting that the petitioner is adopting a patent owner’s claim construction proposals from district court . . . is not a sufficient reason for advancing different positions in the two forums.” Revvo Techs., Inc. v. Cerebrum Sensor Techs, Inc., IPR2025-00632, Paper 20, 5 (PTAB Nov. 3, 2025) (precedential). In Revvo, as in this case, the petitioner did not propose its own constructions for claim terms in the Petition, but instead accepted the patent owner’s proposed constructions from the related district court litigation. Id. at 2. Although the petitioner had proposed different constructions for the claim terms in district court, it did not explain why it was taking a different position before the Board. Id. The Board’s trial rules “do not necessarily prohibit petitioners from taking inconsistent claim construction positions before the Board and a explain why alternative positions are warranted.” Revvo, Paper 20, 3–4 (quoting Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 at 8–9 (PTAB Dec. 13, 2024) (informative)). Petitioner has not sufficiently done so here. Moreover, the fact that Petitioner cannot raise its indefiniteness challenge in an inter partes review is not a sufficient reason to allow Petitioner to take inconsistent claim construction positions before the Board and the district court. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025- 00340, Paper 18, 3 (Nov. 5, 2025) (informative). As explained in the Board’s Tesla decision: Petitioner’s statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation. Indeed, the statement amounts to an assertion that a petitioner should be permitted to raise inconsistent invalidity challenges in the two forums. Petitioner’s explanation may have risen to a sufficient level, for example, if Petitioner had shown that, notwithstanding the alleged indefiniteness of the claim term, an ordinarily skilled artisan would understand that the asserted art satisfies the claim limitation (such as if the limitation prescribed a range and only the outer bounds of the range were unclear). Instead, Petitioner argued indefiniteness in the district court and then adopted Patent Owner’s plain and ordinary meaning construction from the district court litigation in its Petition. Allowing a petitioner to advance a claim construction before the Board when that petitioner has made inconsistent indefiniteness arguments in” slip op. at 7
Claim constructioncites PhillipsPatents in suitUS 12,001,549 - Orca Security Ltd. v. Wiz, Inc.InstitutedPTAB · Dec 15, 2025 · IPR2025-01085 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–21, finding a reasonable likelihood of prevailing on both § 103 grounds: Calvo and Nguyen, and Calvo, Nguyen, and Datsenko.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in a petition and 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). For the reasons explained below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (POSITA) at the time of the ’693 Patent would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar degree, with at least two years of experience in the field of cybersecurity; additional education or experience might substitute for these requirements. Pet. 7 (citing Ex. 1003 ¶¶ 63–64). Patent Owner does not provide a level of ordinary skill in the art. See generally Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’693 patent specification.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“support a construction that is similar to Petitioner’s construction of a “network path” as “a link between two machines.” See Pet. 17. That is, limitation 1(a) recites “selecting a reachable resource having a network path to access the reachable resource, wherein the reachable resource is a cloud object . . . having access to an external network which is external to the cloud computing environment,” and limitation 1(b) recites “actively inspecting the network path to determine if the network path of the reachable resource is accessible from the external network.” This plain language shows that a network path is simply a connection (link) between an external network object and a resource in a cloud (or cloud object). The specification provides an example of accessing “port 22”: “Active inspection allows to [sic] generate instructions directed at the reachable resource over a network path, which when received by the reachable resource cause the reachable resource to send a response.” Ex. 1001, 5:40–45. The specification also states that “a network path may include sequential representations of possible data/control flows between two or more objects in a graph.” Ex. 1001, 12:49–52; accord Ex. 1001, 12:60–62 (describing “a path show[ing] a connection between security objects and/or computing objects that communicate over a network”), 12:42–44 (“A network path is a connection of two or more security objects accessible from an external or internal network, and/or an external or internal object.”). In other words, the specification indicates that a transmitting testing object may be an object external to the cloud connected via a network path to another object (a cloud resource for testing). The “network path” may also include resources/objects (represented as graph vertices) on the path. See id. at 12:51–59 (“A path may be a vertexonly path, describing a sequence of vertex-to-vertex ‘hops,’ an edge-only path, describing only the edges included in the sequence without description of the associated vertices, or a combined edge-vertex path, describing both edges and vertexes included in the sequence.” (emphasis added)). Accordingly, for purposes of institution, we construe a “network path” as “a connection between an external object and a cloud resource, wherein the connection itself include objects and/or cloud resources.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Remaining Terms No express construction of any other claim term is necessary to determine whether to institute inter partes review. 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.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,936,693 - PTAB · Dec 12, 2025 · IPR2025-00763 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Zeira alone or Zeira with Yi renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’838 patent based on all grounds set forth in the Petition for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 10 (citing Ex. 1003 ¶ 21). Patent Owner does not contest this at this stage. See Prelim. Resp. Petitioner’s proposed level of ordinary skill appears to be consistent with the problems addressed in the ’838 patent. See Ex. 1001, 1:30–2:48. Therefore, we adopt it for this decision.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,212,838 - PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §103 grounds, finding a reasonable likelihood of unpatentability over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Ericsson and TS 25.331.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. At this stage in the proceeding, Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,764,803 - Fubotv Media Inc. / Yanka Industries, Inc. et al. v. DISH Technologies L.L.C.All claims unpatentablePTAB · Dec 5, 2025 · IPR2025-00348 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–21 are unpatentable: claims 1–16 and 18–21 as obvious over Leaning, and claims 2 and 9 as obvious over Leaning and Gamble.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“This argument is misplaced. Petitioner does not propose modifying any of Leaning’s teachings. Rather, Petitioner relies on Leaning’s alternative embodiment (i.e., “employ[ing] a criterion which anticipates underflow and avoids it”). See Ex. 1004, 15:3–6; Pet. 38 (citing and quoting same). Patent Owner acknowledges this fact. See PO Sur-reply 12 (“Leaning proposes an alternative embodiment.”) (citing Ex. 1004, 14:25–15:8)). Accordingly, Petitioner need not show a reasonable expectation of success for implementing an alternative embodiment expressly disclosed in Leaning.10” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Accordingly, we accord Patent Owner’s evidence little to no weight. v. Unexpected Results Patent Owner argues that the MOVE Media Player “achieved what” slip op. at 65
- ExcludeMotion to exclude, deniedDenied
Patent outcomesUS 8,868,772 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,868,772 - Fubotv Media Inc. / Yanka Industries, Inc. et al. v. DISH Technologies L.L.C.All claims unpatentablePTAB · Dec 5, 2025 · IPR2025-00347 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over Leaning or Leaning and Gamble, because Petitioner proved the asserted grounds by a preponderance of the evidence.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“argue, that a POSITA would have had a reasonable expectation of success in implementing any of its proposed modifications.” PO Sur-reply 9. This argument is misplaced. Petitioner does not propose modifying any of Leaning’s teachings. Rather, Petitioner relies on Leaning’s alternative embodiment (i.e., “employ[ing] a criterion which anticipates underflow and avoids it”). See Ex. 1004, 15:3–6; Pet. 35–36 (citing same). Patent Owner acknowledges this fact. See PO Sur-reply 11 (“Leaning proposes an alternative embodiment.”) (citing Ex. 1004, 15:3–6). Accordingly,” slip op. at 26
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Accordingly, we accord Patent Owner’s evidence little to no weight. v. Unexpected Results Patent Owner argues that the MOVE Media Player “achieved what” slip op. at 58
- Strike new argumentNew argument consideredDenied
“E. Summary on Motion to Strike For the foregoing reasons, we determine that the Motion is partly” slip op. at 107
Patent outcomesUS 9,407,564 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,407,564 - Fubotv Media Inc. / Yanka Industries, Inc. et al. v. DISH Technologies L.L.C.All claims unpatentablePTAB · Dec 5, 2025 · IPR2024-00919 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–21 are unpatentable as obvious over Leaning, with claims 2 and 9 also obvious over Leaning and Gamble.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“This argument is misplaced. Petitioner does not propose modifying any of Leaning’s teachings. Rather, Petitioner relies on Leaning’s alternative embodiment (i.e., “employ[ing] a criterion which anticipates underflow and avoids it”). See Ex. 1004, 15:3–6; Pet. 38 (citing and quoting same). Patent Owner acknowledges this fact. See PO Sur-reply 12 (“Leaning proposes an alternative embodiment.”) (citing Ex. 1004, 14:25–15:8)). Accordingly, Petitioner need not show a reasonable expectation of success for implementing an alternative embodiment expressly disclosed in Leaning.10” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“proposed combination of Leaning and Gamble teaches all limitations of claims 2 and 9. I find that the added analysis for these claims based on Gamble overcomes the deficiencies in the other ground, including those of the base claim from which they depend. I also differ from my colleagues in how I view secondary considerations of nonobviousness. I find that the developed record of this case does not support that multiple TCP connections or multiple, parallel/simultaneous TCP connections are critical, unclaimed features of the ’772 patent. Indeed, Petitioner does not argue as much, and all challenged claims at least recite multiple TCP connections. Notwithstanding, I would reach the same conclusion as my colleagues that Patent Owner is not entitled to a presumption of nexus. I am persuaded by Petitioner’s argument (Pet. Reply 21–22) that Patent Owner cannot credibly maintain that it is entitled to a presumption of nexus to the same products— the MOVE Media Player and “Sling TV”—across nine patents and 120 claims having different scope while citing to substantially the same alleged evidence of secondary considerations. The MOVE Media Player and “Sling TV” cannot be coextensive with the challenged claims here under these circumstances. In addition, Patent Owner’s own cited evidence suggests that MOVE’s plug-in is a “key” feature of its technology, particularly to ensure “fluidity of playback” (PO Resp. 51–52 (quoting Ex. 2048) (emphasis omitted)), but the claims do not recite a plug-in. This also undermines Patent Owner’s assertions of coextensiveness for claims that all recite “continuous playback.” Otherwise, I agree with my colleagues’ finding that Patent Owner has not adduced significant evidence of direct nexus. Accordingly, I join in my colleagues’ finding that Patent Owner has failed to establish a nexus between the asserted evidence of secondary considerations and the challenged claims. I also agree that Patent Owner’s evidence of secondary considerations is entitled to insignificant weight, or little to no weight, and that it does not outweigh Petitioner’s persuasive obviousness showing under the other Graham factors. Thus, I join in my colleagues’ determination that Petitioner has shown, by a preponderance of the evidence, that claims 2 and 9 would have been obvious over the combination of Leaning and Gamble.” slip op. at 101
- Strike new argumentNew argument disregardedNew argument consideredGranted in part
“E. Summary on Motion to Strike For the foregoing reasons, we determine that the Motion is partly moot and in the remaining part, Patent Owner fails to meet its burden to show that Petitioner improperly switched its theories in the Reply. 31 This raises a different claim construction issue that is unnecessary to decide. F. Order on Motion to Strike The Motion is dismissed in part and denied in remaining parts.” slip op. at 96
Patent outcomesUS 8,868,772 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,868,772 - Fubotv Media Inc. / Yanka Industries, Inc. et al. v. DISH Technologies L.L.C.All claims unpatentablePTAB · Dec 5, 2025 · IPR2024-00918 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over Leaning alone or, for claims 9 and 11, over Leaning and Gamble.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“argue, that a POSITA would have had a reasonable expectation of success in implementing any of its proposed modifications.” PO Sur-reply 9. This argument is misplaced. Petitioner does not propose modifying any of Leaning’s teachings. Rather, Petitioner relies on Leaning’s alternative embodiment (i.e., “employ[ing] a criterion which anticipates underflow and avoids it”). See Ex. 1004, 15:3–6; Pet. 35–36 (citing same). Patent Owner acknowledges this fact. See PO Sur-reply 11 (“Leaning proposes an alternative embodiment.”) (citing Ex. 1004, 15:3–6). Accordingly,” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“argue, that a POSITA would have had a reasonable expectation of success in implementing any of its proposed modifications.” PO Sur-reply 9. This argument is misplaced. Petitioner does not propose modifying any of Leaning’s teachings. Rather, Petitioner relies on Leaning’s alternative embodiment (i.e., “employ[ing] a criterion which anticipates underflow and avoids it”). See Ex. 1004, 15:3–6; Pet. 35–36 (citing same). Patent Owner acknowledges this fact. See PO Sur-reply 11 (“Leaning proposes an alternative embodiment.”) (citing Ex. 1004, 15:3–6). Accordingly,” slip op. at 26
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“connections or multiple, parallel/simultaneous TCP connections are critical, unclaimed features of the ’564 patent. Indeed, Petitioner does not argue as much, and claims 2, 9, and 11 all at least recite multiple TCP connections. Notwithstanding, I would reach the same conclusion as my colleagues that Patent Owner is not entitled to a presumption of nexus. I am persuaded by Petitioner’s argument (Pet. Reply 22–23) that Patent Owner cannot credibly maintain that it is entitled to a presumption of nexus to the same products— the MOVE Media Player and “Sling TV”—across nine patents and 120 claims having different scope while citing to substantially the same alleged evidence of secondary considerations. The MOVE Media Player and “Sling TV” cannot be coextensive with the challenged claims here under these circumstances. In addition, Patent Owner’s own cited evidence suggests that MOVE’s plug-in is a “key” feature of its technology, particularly to ensure “fluidity of playback” (PO Resp. 50 (quoting Ex. 2048) (emphasis omitted)), but the claims do not recite a plug-in. This also undermines Patent Owner’s assertions of coextensiveness for claims that all recite “continuous playback.” Otherwise, I agree with my colleagues’ finding that Patent Owner has not adduced significant evidence of direct nexus. Accordingly, I join in my colleagues’ finding that Patent Owner has failed to establish a nexus between the asserted evidence of secondary considerations and the challenged claims. I also agree that Patent Owner’s evidence of secondary considerations is entitled to insignificant weight, or little to no weight, and that it does not outweigh Petitioner’s persuasive obviousness showing under the other Graham factors. Thus, I join in my colleagues’ determination that” slip op. at 111
- Strike new argumentNew argument disregardedNew argument consideredMixed
“E. Summary on Motion to Strike For the foregoing reasons, we determine that the Motion is partly” slip op. at 107
Patent outcomesUS 9,407,564 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,407,564 - Google LLC v. Cellular South, Inc.Institution deniedPTAB · Nov 21, 2025 · IPR2025-00877 · APJ William V Saindon · IPR · Institution
The Board denied institution for claims 1–11 because the Zhao-Kouzani combination did not sufficiently show a fractal representation based on landmarks.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’853 patent is unpatentable, and we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“generally known in the art, and that this is acknowledged by the ’853 patent. Pet. 40–41 (citing, e.g., Ex. 1001, 15:40–44). Petitioner asserts that Kouzani touts the benefits of fractal models and that it would have been obvious to use Kouzani’s fractal model as the object model in Zhou. Pet 44 (asserting that “[a] person of ordinary skill would have therefore been motivated to implement Kouzani’s techniques in Zhao’s system”); see also id. 42–45. (entire argument). Patent Owner argues that Kouzani’s fractals would not result in the claimed limitation. Prelim. Resp. 21–23. In particular, Patent Owner points out that Kouzani’s fractals use a block-based fractal system, which do not include “a representation of the object based on landmarks associated with the object” as required by claim 1. Id. at 21–22. Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13 (quoting in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, 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 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,126,853 - PTAB · Nov 19, 2025 · IPR2025-00915 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–30 on both asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether or not to institute an inter partes review. Paper 12, 2–3. We, thus, have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, and all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’621 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’621 patent on the grounds stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Bajaj’s testimony (Ex. 1003 ¶¶ 24–27) submits that a person of ordinary skill in the art “would have been someone knowledgeable of and familiar with computer cluster systems and cluster computing techniques” in June 2006. Pet. 12. According to Petitioner, a person of ordinary skill in the art would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of experience working in the field of cluster computing or parallel processing and would be knowledgeable regarding high-level scientific computing languages. Additional work experience can substitute for specific educational background, and vice versa. Id. (citing Ex. 1003 ¶¶ 24–27). Patent Owner does not address Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed level of ordinary skill in the art because it appears consistent with the problems address in the ’621 patent and the cited prior art. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “submit[s] that no claim term requires express construction.” Pet. 12–13. Patent Owner does not address claim construction in the Preliminary Response. We determine, at this stage of the proceeding, that we need not construe any claim terms to resolve the controversy before us. 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“6. Printed Publication Status of Petitioner’s Asserted Prior Art The Federal Circuit instructs that “[t]o qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citing In re Cronyn, 890 F. 3d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (citing Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F. 3d 1340, 1350 (Fed. Cir. 2008)). Further, the question of whether a document qualifies as a “printed publication” for the purposes of 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to a member of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). At this stage of the proceeding, Petitioner “must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential). The reasonable likelihood standard “is lower than the ‘preponderance’ standard to prevail in in a final written decision.” Id.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,563,621
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.