- Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01272 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 14
- Skill levelSkill level board ownOther
“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 that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“While [Dr. Fox] asserts that Oldham’s external engine is the required “networked data source,” he does not identify any teaching in Oldham that there are any “field identifiers” in Oldham’s external engine. Dr. Fox then goes on to argue that “POSAs would have recognized that the SO-properties mapped to the keywords are determined ‘field identifiers of the networked data source stored in the universal variable data database’ based on the dynamic data because the SO-properties for each class are defined by the form engine and mapped to corresponding fields from various forms stored in the form database.” EX1003, ¶ 102. First, Halevy’s SO-properties obviously cannot be “field identifiers” of Oldham’s external engine, because Halevy’s SO-properties do not come from Oldham’s external engine. Rather, they are generated in Halevy’s system as part of the “database schema” of Halevy’s form database. See EX1006, [0038] (“In one embodiment of the present invention, the database describes web sources in terms of an ontology of classes and properties, which is referred to as the ‘search ontology’ (SO).”). In addition, Halevy’s SO-properties are not “field identifiers” at all. Rather, the SO-properties are simply search filters that assist Halevy’s search engine in determining a form’s degree of relevancy to the user’s keyword search query. See EX1006, [0137] (“[T]he system performs a lookup based on the structured query in the form database to identify forms of interest (step 608) and ranks these forms (step 610).”). Also I note that Dr. Fox argues elsewhere in his declaration that SO-properties are “normalized variables,” which even he recognizes are different from “field identifiers.” See, e.g., EX1003, ¶ 101 (“Halevy’s form engine determines field identifiers . . . by mapping keywords in the query to SO-properties (i.e., normalized variables) . . . .”). As described in the ’734 patent, “normalized variables” are used to create associations between field identifiers of different forms, but they are not themselves “field identifiers.” See EX1001, 15:65-16:3 (“In this way, once a site’s category is defined, the variable mapping exercise can be simplified to match which variables or identifiers match up with which normalized variable . . . .”). Thus, Dr. Fox fails to show any teaching or suggestion in the combination of Oldham and Halevy of the claim limitation “determining . . . field identifiers of the networked data source stored in the universal variable data database.” Ex. 2001 ¶¶ 59, 61–64 (underlining added). We adopt Dr. Malek’s testimony and reasoning above as our own.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“b. Halevy’s schema-mapping search engine Although Halevy’s schema-mapping system uses a common set of SO-properties for the form fields in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping for “mapping,” linking, or integrating the field identifiers (parameter names) of different forms on different websites to one another to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 30
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,152,734 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01269 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“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 that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- BurdenNot shown unpatentable
“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). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. For the reasons given below, we determine Petitioner has not established that Belanger and Halevy disclose, teach, suggest or otherwise render obvious independent claim 1 of the ’626 patent. We begin with a discussion of Belanger and Halevy. slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although Halevy’s schema-mapping technique maps each form field to a common set of SO-properties in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping to “link” or integrate form fields (parameter names) of different forms on different websites to each other to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 22
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,789,626 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto 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 arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’378 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,378 - R-Pac International Corporation v. Adasa IncInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01416 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution on claims 1–20 under §325(d), finding the challenges relied on previously presented or cumulative art and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(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. Id. at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Taking a holistic view of the totality of the information presented, we determine that the challenges set forth in the Petition are based on the same or substantially the same prior art or arguments previously presented to the Examiner. Moreover, Petitioner does not direct us to information sufficient to establish a material Examiner error. Accordingly, we exercise our discretion under Section 325(d) and do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–20 of the ’967 patent is denied, and no trial is instituted.” slip op. at 28
Discretionary denialPatents in suitUS 9,798,967 - PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to 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.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36
§ 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · NautilusPatents in suitUS 11,830,546 - K/S Himpp v. Bragi GmbHAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-01205 · APJ Stacey G White · IPR · Final written decision
Claims 1–14 were held unpatentable over the asserted prior art, and the revised motion to amend was denied because proposed substitute claims 15–28 were also unpatentable.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–14 of the ’688 patent are unpatentable.15 In addition, we determine that Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 15–28 are unpatentable. Our determinations are summarized below.” slip op. at 89
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“(d) Conclusion for Obviousness of Claim 15 For the reasons provided above, Petitioner has sufficiently shown that each of Petitioner’s asserted grounds (Hain in combination with Rass, Hain in combination with Shaffer and Rass, Hain in combination with Aumer, and Hain in combination with Shaffer and Aumer) renders proposed substitute independent claim 15 obvious. We have considered Patent Owner’s arguments and we do not agree for the reasons addressed above. Accordingly, we are persuaded that Petitioner has shown, by a” slip op. at 79
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“D. Anticipation by Hain Petitioner asserts that claims 1, 2, and 4 are unpatentable under 35 U.S.C. § 102 as anticipated by Hain, citing the Declaration of Dr. Kiaei for support. Pet. 17–29 (citing Ex. 1002). Patent Owner declined to file a Patent Owner Response and waived all arguments as to Petitioner’s challenges to the original claims. Tr. 35:9–16. In the absence of arguments and evidence from the Patent Owner, we still review Petitioner’s assertions to ascertain whether Petitioner has met its burden to establish the unpatentability of the original claims by a preponderance of the evidence. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For the reasons explained below, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1,2, and 4 are anticipated by Hain. 1. Independent Claim 1 Petitioner’s argument regarding the teachings of Hain in regards to” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“E. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). We have reviewed Petitioner’s arguments and evidence and based on the evidence in the complete record, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 1–6, 8–12, and 14 would have been obvious over the combination of Hain and Shaffer. For example, Petitioner’s arguments regarding independent claim 1 may be summarized as follows: Petitioner asserts that Shaffer teaches the preamble7 of claim 1, which recites a method for power control of a wireless earpiece. Pet. 29–31 (citing Ex. 1003 ¶¶ 32, 34, 62, 63, Figs. 3A, 10; Ex. 1002 ¶¶ 56–57). Petitioner contends that Shaffer’s wireless earbuds 1010 and 1012 are powered down automatically when they are placed into their storage case 11. Id. at 30. Specifically, Petitioner argues that Shaffer’s earbuds enter a low power mode in response to a magnetic sensor detecting that the earbuds are in their storage case. Id. at 31. Petitioner further contends that Shaffer in view of Hain teaches” slip op. at 20
Patent outcomesUS 10,397,688 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,397,688 - K/S Himpp v. Bragi GmbHAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-01204 · APJ Larry J Hume · IPR · Final written decision
Claims 1–13 are unpatentable under the asserted anticipation and obviousness grounds; the revised motion to amend is denied because substitute claims 14–26 are unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“1–13, respectively. RMTA 1. A listing of proposed substitute claims 14–26 is provided by Patent Owner in Appendix A of its Revised Motion to Amend. Id. at APPX A-1. For the reasons explained below, we determine that Patent Owner has shown that proposed substitute claims 14–26 meet the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. However, we also determine that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 14–26 are unpatentable. Accordingly, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 47
Patent outcomesUS 10,117,014 unpatentableNonecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,117,014 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Almondnet, Inc. And Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2024-00666 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the asserted combinations did not establish the required determination that access occurred during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. Patent Owner has not challenged the status of Baig as prior art. See PO Resp. Based on our review of the complete record, we find that Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - Meta Platforms, Inc. / ROKU, Inc. et al. v. Almondnet, Inc. And Intent Iq, LLCNo claims unpatentablePTAB · Feb 19, 2025 · IPR2024-00701 · APJ Stacey G White · IPR · Final written decision
Claims 1–4 and 6–23 were not shown unpatentable because the prior-art combinations did not establish a determination that devices accessed the Internet during a predetermined period.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. See Ex. 2001 ¶ 26 (adopting Petitioner’s proposed level of skill in the art for the purposes of this proceeding). We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. Accordingly, we adopt Petitioner’s description.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. “Patent Owner does not contend that any terms in the challenged claims require express construction for purposes of evaluating the Petition’s invalidity grounds.” PO Resp. 7. We determine that no claim terms require express construction for purposes of this Decision. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. Patent Owner has not challenged the status of Baig as prior art. See PO Resp. Based on our review of the complete record, we find that Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner that the plain language of the claim requires there to be a determination that devices accessed the LAN during the predetermined period of time. The claim language recites that the determining of limitation (a) (which recites the determination of an association between the identifiers) is done using the stored association-detection information (which is alleged to be the cookies and session table of the cited art) “to determine” that the mobile devices have separately accessed the internet through a LAN “during a predetermined period of time.” See Ex. 1001, 24:29–49. Thus, we read this language to require that a determination be made that the required access occurred during a predetermined period of time. This reading of the claim language is accord with the opinion expressed by Petitioner’s expert, Mr. Schmandt, at his deposition. Q So is it your opinion that the – the limitation 1B requires that the system determines whether or not the accesses by the -- the two electronic devices occurred within a predetermined period of time? A Yes.” slip op. at 17
Patent outcomesUS 10,715,878 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878
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.