- Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · Jun 11, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2024-00856.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. For the reasons given above, we are persuaded that Petitioner has demonstrated that permitting Petitioner to join the ’856 IPR would avoid duplication and promote the efficient resolution of both proceedings and is therefore in the interests of justice.” slip op. at 6
- BurdenInstituted
“III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5
NonePatents in suitUS 8,982,109 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00067 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–36 are unpatentable under § 103; the Board relied on Morford and Maes, with Lu, McGrew, or Barreto for dependent-claim grounds, and did not reach Allen-based grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“With respect to the claimed ABD, we determine that even under Patent Owner’s construction requiring a “processor optimized for audio and video compression,” Petitioner has shown that the independent claims would have been obvious over Morford and Maes.10 Therefore, we need not construe the term to resolve the obviousness contentions at issue.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–20) or system (for system claims 21–36). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1003, 38:34–36, 38:42–54. However, claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 38:31–33. Clearly, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. But the claim limits these two actions to the individual steps in which they appear. Only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six stated autonomous ABD actions are required to be performed “without modification or circumvention of the router.”” slip op. at 12
- Skill levelSkill level board ownOther
“For purposes of this Decision, we do not determine that the differences between the proffered levels of ordinary skill in the art would be dispositive. We adopt our determination in the Institution Decision, in which we adopt the parties’ asserted level having between two to four years of experience. Inst. Dec. 20.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“b) Analysis Having reviewed the entirety of the record and analyzed the evidence, we determine, with respect to the limitations not specifically contested by Patent Owner, that Petitioner’s assertions are supported by the record, in the manner discussed above. Regarding those limitations contested by Patent Owner, we address and analyze those limitations below. As discussed below, we determine that Petitioner has shown, by a preponderance of the evidence, that claim 1 is unpatentable under § 103 as obvious over the combination of Morford and Maes.” slip op. at 27
Patent outcomesUS 10,154,317 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,154,317 - Resi Media LLC v. Boxcast Inc.All claims unpatentablePTAB · Apr 12, 2023 · IPR2022-00066 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–30 are unpatentable under § 103; the Board relied on Allen and Maes for claims 1–17, 21–24, 26, and 30, and did not reach remaining grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“without modification or circumvention of the router” as follows. We begin with the language of the claims and the originally-filed disclosure. With respect to the originally-filed disclosure of the ’574 patent, no explicit discussion is presented to define or explain the terms “modification” or “circumvention.” With respect to the claims as a whole, the “without modification to or circumvention of” is a limitation to specific steps or configurations, not to the entirety of the claimed method (for method claims 1–11, 22–30) or system (for system claims 12–21). Using claim 1 as an example, the ABD must, “without any modification to or circumvention of the router . . . receive data . . . from the first server.” Ex. 1001, 26:32–60. Claim 1 also requires “establishing an Internet connection for the ABD behind the router” in which the “router prevents remote access to the ABD from outside the router.” Id. at 26:35–37. However, the router cannot simultaneously prevent (all) remote access to the ABD from outside the router and also permit the first server to send data to the ABD. So, the claim limits these two actions to the individual steps in which they appear. Therefore, only during the “establishing an Internet connection” step is the router required to “prevent remote access to the ABD.” And only the six autonomous ABD actions recited in the claim are required to be performed “without modification or circumvention of the router.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“3. Additional Claim Terms Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)). With respect to the terms “scheduling logic,” “streaming information,” “contemporaneously with the live event,” “transmitted [received] out of band,” and “dynamically scaling the server based on demand,” these terms are not in controversy. Thus, we need not construe those terms.” slip op. at 16
- Skill levelSkill level board ownOther
“Patent Owner does not specifically assert a level of skill in the art. Patent Owner’s declarant, Dr. Akl, does testify that a person of ordinary skill in the art of the ’574 patent: would have . . . a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience in the design or development of telecommunication and networked systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 2017 ¶ 35. Under either level of skill, a person having a bachelor’s degree in computer engineering or a related field, and a couple years’ experience in networked systems or the equivalent would qualify as a person having ordinary skill in the art. The primary difference between Petitioner’s assessment and Dr. Akl’s is whether “2–3 years” or “four years” of experience is appropriate, neither explains why their assessment is appropriate. See Ex. 1007 ¶ 30; Ex. 2001 ¶¶ 20, 21 (addressing without argument or comment the assessment of Petitioner’s declarant); Ex. 2017 ¶ 35. For our analysis, we do not determine this difference to be dispositive; rather, we determine that the appropriate level is between two and four years of experience.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“that Allen lacks an ABD behind a router. Rather, we credit the testimony of Dr. Easttom that a “network has to have a router,” and “a router must be present in Allen” given Allen’s use of WANs with the Internet being one example of a WAN. Ex. 1007 ¶¶ 226, 228; Ex. 2001 ¶ 85; see Ex. 2005, 125:19–126:25. Dr. Akl also characterizes WANs at the critical time as having a “single, unique, public outfacing address,” referred to as its “WAN IP,” and that the term “WAN IP was used in the reference materials for (“share one Wide Area Network (WAN) IP address for multiple computers on your Local Area Network”)). Dr. Akl further describes client devices in a Local Area Network as connecting to other devices on the Internet through a router. Id. ¶ 43. Second, we find that Allen discloses an ABD, even under Patent Owner’s construction, because Allen’s MCD (1) is a “dedicated (i.e., specific-purpose) device” and not merely a general-purpose computer, and (2) is “configured to capture, process, store and/or send real-time media signals (e.g., audio signal, video signal . . . )” and broadcast the audio/video content over a network. See Ex. 1008 ¶¶ 1015, 1021, 1076–1077, Figs. 6, 8; Ex. 1056 ¶¶ 46–47. Additionally, we credit the testimony of Dr. Akl, who testified that “if [a computer] is able to carry out the functionality, then it’s not a general-purpose computer.” Ex. 1064, 55:23–25.” slip op. at 31
Patent outcomesUS 9,686,574 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,686,574 - Slack Technologies, LLC v. Ginegar LLCAdverse judgmentPTAB · Jan 9, 2023 · IPR2022-00542 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Ginegar on claims 1–16 of the ’865 patent after its request and disclaimer; those claims are cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Having reviewed Patent Owner’s requests and the cited decisions and exhibit, we determine that entry of judgment against the Patent Owner with respect to claims 1 and 2 of the ’521 patent and claims 1–16 of the ’865 patent is appropriate. ORDER Accordingly, it is: ORDERED that judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1 and 2 of U.S. Patent No. 9,367,521 B2 and claims 1–16 of U.S. Patent No. 9,760,865 B2; FURTHER ORDERED that claims 1 and 2 of U.S. Patent No. 9,367,521 B2 and claims 1–16 of U.S. Patent No. 9,760,865 B2 are cancelled; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a) for each of the captioned proceedings.” slip op. at 2
NonePatents in suitUS 9,760,865 - Slack Technologies, LLC v. Ginegar LLCAdverse judgmentPTAB · Jan 9, 2023 · IPR2022-00541 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claims 1–2 of the ’521 patent and claims 1–16 of the ’865 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Having reviewed Patent Owner’s requests and the cited decisions and exhibit, we determine that entry of judgment against the Patent Owner with respect to claims 1 and 2 of the ’521 patent and claims 1–16 of the ’865 patent is appropriate.” slip op. at 2
NonePatents in suitUS 9,367,521 - Quantum Metric, Inc. / Decibel Insight, Ltd. et al. v. Content Square Israel Ltd. (F/K/A Clicktale Ltd.)Adverse judgmentPTAB · Jan 19, 2022 · IPR2021-00416 · APJ Steven M Amundson · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it requested judgment following cancellation of claims 1–20 in a reissue application, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Board’s rules provide that “[a] party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b)(2). Because Patent Owner requests adverse judgment and Petitioner does not oppose, the entry of judgment adverse to Patent Owner is appropriate.” slip op. at 2
NonePatents in suitUS 10,079,737 - Hulu, LLC v. Pucs, Inc.Adverse judgmentPTAB · Jan 10, 2022 · IPR2021-00811 · APJ Joni Y Chang · IPR · Adverse judgment
The Board entered adverse judgment against Pucs, Inc. on claims 1–7 after the patent owner disclaimed all claims remaining in the instituted trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner disclaims claim 1−7 of the 619 patent, which are all claims for which trial was instituted such that there are no remaining claims in the trial. Ex. 2005, 1. In its Request for Judgment, Patent Owner requests adverse judgment against itself with respect to the claims of the ’619 patent. Paper 18, 1.” slip op. at 2
NonePatents in suitUS 10,728,619 - Unified Patents, LLC v. Voice Tech CorporationAll claims unpatentablePTAB · Dec 13, 2021 · IPR2020-01018 · APJ John F Horvath · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Wong and Beauregard; the Board did not reach the Ben-Efraim and Balakrishnan ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerNot time barredDecided for petitioner
“an unnamed RPI, we are not persuaded by Patent Owner’s argument that this proceeding should be terminated for failure to identify all RPIs. First, Patent Owner’s argument is based on an incorrect premise that 35 U.S.C. § 312(a) is a jurisdictional statute that must be satisfied to give the Board jurisdiction. This premise is contrary to the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38, 5 (PTAB Mar. 4, 2016) (precedential) (“§ 312(a) is not jurisdictional”). may rectify non-compliance with the statute. Id., Paper 38 at 5. The Federal Circuit has upheld the Board’s finding that § 312(a) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.”).” slip op. at 5
- Strike new argumentGranted
“Petitioner moved to strike Exhibits 2038–2041 as against Board policy and to deny consideration of those portions of the Sur-Reply that rely on these Exhibits. See Paper 39, 1; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide at 73 (Nov. 2019)2 (“The sur-reply may not be accompanied by new evidence other than the deposition transcripts of the cross-examination of any reply witness.”). Patent Owner opposed. See Paper 40. We granted Petitioner’s motion, and expunged Exhibits 2038– 1 Unless noted otherwise, we cite to the public versions of the papers filed by the parties. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated to any arguments first presented in Patent Owner’s Sur-Reply that rely on any of Exhibits 2038–2041. An oral hearing was held on September 21, 2021, and the hearing transcript is included in the record. See Paper 45 (“Tr.”).” slip op. at 2
- Skill levelSkill level board ownOther
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of skill in the art should be commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For the reasons discussed in § II.F.3, infra, we find the field of invention is voice in the art would have had a bachelor’s degree in electrical engineering, computer science, or a related field, and three years of experience working on voice activated computing. slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Neither the Specification nor the prosecution history defines or limits the plain and ordinary meaning of an audio command interface; nor do any of the passages cited by Patent Owner. 4 Patent Owner cites to pages 476–492 of Exhibit 1002. See PO Resp. 9; Ex. 1002. The subject matter Patent Owner describes, however, can be found in Exhibit 1008, the prosecution history of the parent to the ’679 patent. See Ex. 1008, 476–492. We correct the citation here. Although the Specification describes audio command interface 108 as a component of system 100 “implemented in hardware, software, or a suitable combination of hardware and software,” system 100 is an “exemplary” embodiment rather than a limiting embodiment. Ex. 1001, 2:21–24, 2:38– 45. In any event, all computer components can be implemented as hardware, software or suitable combinations of hardware and software. Similarly, although the Specification distinguishes system 100 over prior art systems requiring “voice command interoperability,” it does not identify audio command interface 108 as the component that distinguishes system 100 over the prior art. Id. at 4:45–57. Regardless, as discussed above, system 100 is described as an “exemplary” rather than a limiting embodiment. Id. at 2:21–24. Moreover, contrary to Patent Owner’s contention, the prosecution history did not limit the plain and ordinary meaning of an audio command interface. See PO Resp. 9. Although the applicant amended claims to recite an audio command interface and argued the audio command interface eliminated the need for “voice command interoperability,” the amended claims were subsequently abandoned after further rejection by the Examiner. See Ex. 1008, 477–486 (amending claims 1–12 to recite an audio command interface); id. at 416 (continued rejection of claims 1–12), id. at 304 (cancellation of claims 1–12). Finally, although the Specification discloses “system 300 provides an audio command interface that allows a person to use voice commands from mobile device 102 to access and control native applications or operating system functions,” it does not limit the audio command interface to one that receives voice commands from a mobile device. Ex. 1001, 7:36–49. First, like system 100, system 300 is an “exemplary” rather than a limiting” slip op. at 13
Patent outcomesUS 10,491,679 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,491,679
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.