- Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 patent specification and 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). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62
Patent outcomesUS 11,336,832 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,336,832 - Lumi Legend Corporation v. Manehu Product Alliance, LLCAdverse judgmentPTAB · Feb 28, 2025 · PGR2024-00014 · APJ Barry L Grossman · PGR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment against itself and held claims 33–36 unpatentable.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“October 25, 2024, from counsel for Patent Owner, Patent Owner requested authorization to file “a request for adverse judgment against itself under 37 C.F.R. § 42.73(b).” Ex. 3003 (emphases added). Our Rule 42.73(b) states “A party may request judgment against itself at any time during a proceeding.” The Board granted Patent Owner’s request. Ex. 3003. Patent Owner then filed its “Request for Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b).” Paper 11 (Request for Adverse Judgment). This Request, however, stated, in error, that Patent Owner requested “adverse judgment against Petitioner on claims 33-36, pursuant to 37 C.F.R. § 42.73(b)(4).” Id. (emphases added). Our Rule 42.73(b)(4) concerns “[a]ctions construed to be a request for adverse judgment.” 37 C.F.R. § 42.73(b)(4) (emphasis added). Subsection (b)(4) states one of the actions construed to be a request for adverse judgment is “[a]bandonment of the contest.” Id. The actions construed to be a request for adverse judgment, however, are never reached when a party states unequivocally that it requests “judgment against itself.” that the Request for Adverse Judgement is seeking adverse judgment against itself, not Petitioner. Id. As stated in the title of Patent Owner’s Request for Adverse Judgment, we consider this request under our Rule 42.73(b). As corrected, the Request seeks a “final adverse judgment against [Patent Owner] on claims 33-36,” which are all the challenged claims. Thus, claims 33–36 are held to be unpatentable. 1” slip op. at 2
NonePatents in suitUS 11,781,703 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25
Patent outcomesUS 8,898,494 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–24 are unpatentable as obvious over Sutardja, Sutardja and Rychlik, or Sutardja and Carmack; the Board did not reach the Mathieson-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 14–15.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We decline to “throw out” Dr. Horst’s testimony for several reasons. First and foremost, Patent Owner has not moved or otherwise sought to exclude his testimony, or even filed an objection. Hearing Tr. 46:19–47:1. Thus, the issue of whether the testimony should be excluded is not properly before us. Further, Petitioner asserts that “[t]his distinction is irrelevant.” Pet. Reply 2. We agree. Patent Owner has not pointed to any opinion by Dr. Horst that turns on the alleged “flaw” in the definition of the person of ordinary skill. Id. at 46:19–48:3. Finally, there is no prejudice. Patent Owner’s expert used the definition proposed by Patent Owner in his analysis. See Brogioli Decl. ¶ 25. Nor could Patent Owner show us with specificity any place in the record where resolving this dispute would make a difference in this case. Hearing Tr. 46:3–47:3. For the reasons given, we do not see the need to modify our definition of a person of ordinary skill or to exclude or give little weight to Dr. Horst’s opinions.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“operating system.” PO Resp. 12–13. Relying on the Microsoft Computer Dictionary, Patent Owner contends that “[a]n ‘operating system’ is, and would be understood by a person of ordinary skill in the art to be, ‘The software that controls the allocation and usage of hardware resources such as memory, central processing unit (CPU) time, disk space, and peripheral devices.’” PO Resp. 13 (citing Ex. 2007, 378). Dr. Brogioli’s testimony generally supports this construction, as does Dr. Horst’s. See Brogioli Dep. 8:17–22; Horst Dep. 32:3–8. Petitioner responds that the term “should be understood in accordance with its plain meaning,” and therefore does not require construction, but does not dispute Patent Owner’s proposed construction. Pet. Reply 2. For the reasons given, we adopt Patent Owner’s construction for “operating system.” However, we do not see this construction as dispositive of the central issue of whether the operating system in Sutardja controls the transition of the cores. See Section II.D.1, infra. slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“PMS module do not ‘control’ the core switching module or the hardware on which it runs. Instead, the kernel and the PMS module only make system calls to the core switching module.” PO Resp. 27. We disagree that this is not sufficient control to meet this claim limitation. As Dr. Horst’s testimony (quoted supra) explains, the PMS module and kernel modules “trigger a transition” by generating a call to the hypervisor module or a core switching module. Horst Decl. ¶ 124. Patent Owner’s argument fails because it assumes the claims require direct control, when the claims recite no such restriction (nor have we been asked by either party to construe the claims as such).” slip op. at 28
Patent outcomesUS 10,049,080 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,049,080 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,198,054 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - PTAB · Oct 11, 2023 · IPR2023-00830 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds and granted T-Mobile’s motion to join the CommScope IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenged claims and all asserted grounds of unpatentability. CommScope IPR, Paper 18 (institution decision); see also CommScope IPR, Paper 1 (the “CommScope petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the CommScope IPR. Compare Pet. 3, with CommScope petition, 4; see also Mot. 1 (asserting that “[t]his Petition and supporting declaration are substantively identical to the petition and declaration submitted in the CommScope IPR”; “Petitioner here asserts that the same claims are obvious over the same prior art based on the same arguments presented by the same expert as in the CommScope IPR”). As indicated, Petitioner also relies on the same declarant as in the CommScope IPR. Mot. 1; compare Ex. 1003 (Declaration of Anthony Acampora, Ph.D.) with CommScope IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the CommScope IPR and for the same reasons stated in our Decision to Institute in the CommScope IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See CommScope IPR, Paper 18, 19–41 (analyzing challenges in the CommScope petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the CommScope petition, contains the same grounds based on the same evidence, and relies on the same declaration of Anthony Acampora, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner represents that joinder will not impact the CommScope IPR schedule. Id. at 5. Petitioner also represents that it “agrees to take an ‘understudy’ role in the joined proceeding, so long as CommScope remains an active party.” Id.” slip op. at 8
NonePatents in suitUS 10,334,499 - PTAB · Aug 28, 2023 · IPR2022-01317 · APJ Jason W Melvin · IPR · Institution
The Board instituted review of claims 1–30 on the asserted grounds and granted Cooler Master’s motion to join IPR2022-01317, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having already considered the merits of those challenges and the evidence in the Apaltek IPR and having determined that the threshold for institution of inter partes review has been met, we determine that the Petition here also presents a reasonable likelihood of prevailing on the challenges to at least one claim. Therefore, for the same reasons stated in our Decision to Institute in the Apaltek IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See IPR2022-01317, Paper 7.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the Apaltek IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Georgios Karamanis, Ph.D. (Ex. 1003). Petitioner also represents that joinder will not impact the Apaltek IPR schedule. Mot. 3 (“Petitioner agrees to the deadlines set forth in the Apaltek IPR Scheduling Order”).” slip op. at 10
NonePatents in suitUS 8,245,764
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.