- Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentablePTAB · Jun 10, 2026 · IPR2025-00350 · APJ Jason M Repko · IPR · Final written decision
Claims 7–12 were held unpatentable over Wannamaker alone or with Avellan; claims 1–6 and 13 were not shown unpatentable because Avellan did not teach the claimed screen-capture sequence and assembly.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 17. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 19–20; PO Resp. 18. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Yet paragraph 122 of Mr. Lipoff’s declaration merely repeats the Petition’s argument almost verbatim. Compare Ex. 1007 ¶ 122, with Pet. 28. Mr. Lipoff does not add any citation to Avellan or any other source that supports his testimony. See Ex. 1007 ¶ 122. Nor does Mr. Lipoff offer any additional technical reasoning than what is stated in the Petition. Testimony may be entitled to little weight if it merely restates the petition’s unsupported, conclusory assertions without adding supporting evidence or technical reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). That is the case here.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner’s argument that claim 1 is not obvious over Avellan because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 21–23. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. PO Sur-reply 20. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 21–23; PO Sur-reply 20.” slip op. at 7
Patent outcomesUS 10,524,002 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,524,002 - Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentablePTAB · May 28, 2026 · IPR2025-00351 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over the stated combinations; claims 10–26 were not shown unpatentable because Avellan does not teach limitations [10d]–[10f].
RulingsFinal written decision- Skill levelOther
“would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). The Petition further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art of delivering multimedia content. Resp. 18. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 11; Resp. 18–19; Reply 5. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable
“To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Reasonable inferences of a POSITA may suffice to establish inherent disclosure in a prior art reference such as Farber. See Eli Lilly v. Los Angeles Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.”). Here, however, we find the Petition’s argument and evidence insufficient to establish by a preponderance of the evidence that Farber inherently discloses limitation [1b].” slip op. at 16
Patent outcomesUS 11,140,441 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,140,441 - Kohler Co. v. Delta Faucet Co.Some claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00700 · APJ Jane E Inglese · IPR · Final written decision
Claims 1, 2, and 9 are unpatentable as obvious; claims 3–8 and 10–24 were not shown unpatentable because the asserted references failed to establish limitations including the claimed light pipe features.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of a POSITA. Petitioner’s witness (Mr. Cook) qualifies as a POSITA under this definition, and, therefore, is qualified to opine from the perspective of a POSITA on technical matters included within the areas of expertise prescribed by the definition. As indicated above, Petitioner’s definition of a POSITA does not require education in the field of optics and professional experience designing or analyzing optical apparatus, unlike Patent Owner’s definition. We are aware, however, that Patent Owner’s witness (Dr. Klopp) has more extensive experience with optical systems and methods than Petitioner’s witness (Mr. Cook). Compare Ex 1003 ¶¶ 8–14, Ex. 2005, 39:21–59:17, with Ex. 2003 ¶¶ 3–20, Ex. 2004, 1–2, Ex. 1015, 10:22–13:25. Although Mr. Cook possesses excellent credentials in the field of mechanical engineering, his experience in the design and analysis of optical systems and methods is sparse and insubstantial compared to that of Dr. Klopp. Id. Due to this difference in experience levels, in instances where the witnesses express differing views on factual issues related to optical systems and methods, we will accord more weight to Dr. Klopp’s testimony than to Mr. Cook’s.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“through the light transmission portion and bottom output face 313 of light conductor 38, which teaches transmitting light in parallel with the longitudinal axis of the housing. Tseng does not disclose or teach that light is emitted through the side surface of annular protrusion 383 in a direction perpendicular to the longitudinal axis of the housing. Ex. 1004 ¶ 97. Petitioner’s assertions that this would be the case consist solely of conclusory statements, supported only by citations to Mr. Cook’s declaration. Mr. Cook, however, simply repeats Petitioner’s conclusory statements, without providing sound technical reasoning supported by objective evidence to explain and support his opinions. Ex. 2003 ¶¶ 101– 102, 105, 195–198, 202. We, therefore, accord little weight to Mr. Cook’s opinion on this particular matter because it “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Furthermore, Mr. Cook’s opinion conflicts with that of Patent Owner’s witness, Dr. Klopp, who opines that a “POSITA would understand from Tseng’s third embodiment that light from the LED would bypass the annular protrusion 383 of outer cliff 381, while transmitting downwardly toward the output face 313.” Compare Ex. 1003 ¶¶ 174–175, 190–194, with Ex. 2003 ¶¶ 101–102, 105. As discussed above, Mr. Cook is qualified to opine from the perspective of a POSITA on technical matters included within the expertise of a person meeting Petitioner’s definition of a POSITA, which do not include optics and optical apparatus. We, therefore, credit Dr. Klopp’s opinion over that of Mr. Cook on this particular factual issue of how it is directly related to optical systems and methods about which Mr. Cook possesses limited relevant experience. See Ex. 1003 ¶¶ 6–15 (experience in communication systems and electronics); Ex. 2005, 55:16–58:19 (design experience with electronics that use indicator lights or fiber-optic communications; no professional experience with light pipes, diffusers, or plumbing fixtures). Dr. Klopp possesses substantial research and professional experience with optical methods, fiber optic light pipes, light guides, diffusers, prisms, and analysis of faucets, spray heads, and plumbing fixtures. See Ex. 2003 ¶¶ 6–10 Supra 8 (discussing weight accorded to conflicting witness testimony); see also Resp. 2–3 (arguing that “Petitioner’s expert, Mr. Cook, is a mechanical engineer with substantial professional experience in electronics for high-voltage power systems and communications, but he has limited experience with the claimed subject matter.”).” slip op. at 34
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“would be used to construe the claim[s] in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it applies the plain and ordinary meaning of the claim terms. Resp. 7. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of resolving the dispute before us.” slip op. at 9
- BurdenMixed
“perpendicular to the longitudinal axis of Tseng’s housing (internal 33 and external 34 sleeves). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)).” slip op. at 40
Patent outcomesUS 10,393,363 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,393,363 - Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44
Patent outcomesUS 10,806,124 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,806,124 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision
Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision
Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we find that the record does not support construing” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043 - Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentablePTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing 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 neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34
Patent outcomesUS 9,998,515 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,998,515 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision
Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69
Patent outcomesUS 8,081,026 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,081,026 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Jan 12, 2021 · IPR2019-01194 · APJ Minn Chung · IPR · Final written decision
Claims 1 and 2 are unpatentable over Kim and Lee under § 103; Petitioner did not prove claims 4, 5, and 7 unpatentable because the combination was not adequately supported.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“determine that Petitioner has demonstrated sufficiently that the combination of Kim and Lee teaches “a mode indicator generator for generating a mode indicator that indicates a desired mode of the power gated circuit,” as recited in claim 1, and has articulated sufficient reasoning with rational underpinning for combining Kim and Lee to arrive at the subject matter of this claim limitation. c. Conclusion on Claim 1” slip op. at 64
- Expert testimonyOther
“F. Testimonial Evidence Petitioner relies on two Declarations from David Harris, Ph.D. in” slip op. at 9
Patent outcomesUS 8,081,026 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,081,026 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91
Patent outcomesUS 8,004,922 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,004,922
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.