- 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 - PTAB · Dec 13, 2024 · IPR2024-00990 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–23 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we grant Petitioner’s request and institute an inter partes review of claims 1–12 and 14–23 of the ’007 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“near the heel in a 5,000-feet horizontal wellbore, than the shunt tubes in the lower-pressure side.” Id. (citing Ex. 1005, 28:17–24, 30:16–20; Ex. 1003 ¶ 292). Petitioner points out that Yeh “express disclos[es] that a ‘certain surrounding wall thickness is required’ ‘to stay within the burst, bending, and collapse ratings.” Id. at 42 (quoting Ex. 1005, 28:20–23; citing Ex. 1017, 24 (Equation (14) showing burst pressure roughly directly proportional to wall thickness), Ex. 1003 ¶ 295). Mr. Chambers provides support, explaining that Yeh “expressly taught that ‘to maintain the mechanical integrity (that is, to stay within the burst, bending, and collapse ratings) of the secondary flow paths, a certain surrounding wall thickness is required.’” Ex. 1003 ¶ 291 (quoting Ex. 1005, 28:20–24). According to Mr. Chambers, “a POSITA understood that containing internal pressure within tubing required a certain wall thickness, wall thickness being one of three parameters (wall thickness, tubing material, and tubing outside diameter) that could be adjusted to meet pressure containment requirements.” Id. “[A] POSITA would understand that the tubing wall thickness in the eccentric screens would be less than the tubing wall thickness in the concentric screens due to the lower pressure requirement.” Id. at ¶ 295. Given said disclosures and supporting testimony, at this stage, Petitioner sufficiently shows on this record that Yeh suggests limitation 1[e].” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: [at] the time of the alleged invention in 2018, a POSITA[3] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also, additional education in a relevant technical discipline could compensate for less experience in the relevant field, and vice versa. Pet. 31–32 (citing Ex. 1003 ¶¶ 36–40). Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 10
§ 103 obviousnesscites GrahamPatents in suitUS 11,333,007 - PTAB · May 6, 2024 · IPR2024-00144 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–21 on all petition grounds and granted Apple’s motion to join the Samsung 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. Samsung IPR, Paper 9; see also Samsung IPR, Paper 2 (the “Samsung Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Samsung IPR. Compare Pet. 1, with Samsung Petition, 2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Samsung IPR. Mot. 6 & n.2; Ex. 1003. Because the grounds of unpatentability in the instant Petition are identical to those in the Samsung IPR, for the same reasons stated in our Decision to Institute in the Samsung IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Samsung IPR, Paper 9, 41-71 (analyzing challenges in the Samsung Petition).” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). joinder is appropriate because, as set forth above, the Petition (1) is materially the same as the Samsung Petition, (2) contains the same grounds based on the same evidence, and (3) would promote efficiency. See Mot. 3, 6. Petitioner represents that joinder will not unduly burden Patent Owner or negatively impact the Samsung trial schedule. Id. at 7.” slip op. at 9
NonePatents in suitUS 9,369,545 - PTAB · May 6, 2024 · IPR2024-00145 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–24 on all asserted grounds and granted Apple’s motion to join the Samsung IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- 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 (1) is materially the same as the Samsung Petition, (2) contains the same grounds based on the same evidence, and (3) would promote efficiency. See Mot. 3, 6. Petitioner represents that joinder will not unduly burden Patent Owner or negatively impact the Samsung trial schedule. Id. at 7.” slip op. at 10
NonePatents in suitUS 8,510,407 - PTAB · May 6, 2024 · IPR2024-00143 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–16 on all asserted grounds and granted Apple’s motion to join the Samsung IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’083 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is materially the same as the Samsung Petition, (2) contains the same grounds based on the same evidence, and (3) would promote efficiency. See Mot. 3, 6. Petitioner represents that joinder will not unduly burden Patent Owner or negatively impact the Samsung trial schedule. Id. at 7.” slip op. at 8
NonePatents in suitUS 8,020,083 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Apr 15, 2024 · IPR2023-01318 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–15 and 17–31, finding a reasonable likelihood that at least one challenged claim would be shown obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, and based on the current record and claim scope, we disagree that a reasonable expectation of success cannot be inferred from Petitioner’s arguments. Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375–76 (Fed. Cir. 2023) (“To be clear, an obviousness determination requires finding that a person of ordinary skill in the art would have had a reasonable expectation of success. Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention. Unlike a motivation to combine determination, which requires an explicit analysis, a finding of reasonable expectation of success can be implicit.” (internal citations omitted)). After review of the evidence and arguments, including those summarized above, we determine that a reasonable likelihood of prevailing has been shown that the combination of Tolman, Means, and Crawford teaches or suggests the limitations of claim 1.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). Prelim. Resp. 15–28. We decline. As noted in the Petition, “the Examiner did not consider Tolman in combination with any other reference.” Pet. 98 (citing Ex. 1002, 777–778). For this reason, we find that the same or substantially the same prior art or arguments previously were presented to the Office. Even considering that the Examiner considered Crawford “pertinent to applicant’s disclosure (Ex. 1002, 550), the Examiner did not apply Crawford in a rejection, nor did the Examiner consider Means. We further agree with Petitioner that “the Examiner’s analysis mapped different elements of Tolman to satisfy the claim elements of the ’082 patent from Dr. Nikolous’ analysis, such as Tolman’s production system 100 to the claimed ‘centralized well treatment fluid center.’” Id. at 98–99. Thus, the art and arguments as a whole are not the same as considered in prosecution. Thus, Patent Owner does not persuade us that exercising our § 325(d) discretion is appropriate.” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The paragraphs highlighted by Patent Owner include extensive citations in support of the statements made by Petitioner’s declarant, Dr. Nikolaou. For example, paragraph 69 of Dr. Nikolaou’s declaration includes three citations to two different documents and includes extensive explanation. The noted paragraphs all appear to include support in the evidence of record. Further, Patent Owner only provides a general allegation without discussing any particular paragraph or opinion. Thus, it is unclear which opinions Patent Owner considers conclusory. Further, whether the declaration and Petition include similar or even identical statements is not a reason, by itself, to give the declaration little to no weight. As noted by Patent Owner (Prelim. Resp. 56–58), it is only when these statements are conclusory that they should be given little to no weight. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”). For these reasons, and at this stage, we decline Patent Owner’s invitation to give little to no weight to Dr. Nikolaou’s testimony as a whole.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had: at least a bachelor of science in chemical engineering, mechanical engineering, materials science, or metallurgical engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. A person having [more] education but less professional experience, and vice versa, may . . . also qualify as a POSITA. Pet. 3–4 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’082 patent and prior art purposes of this Decision.” slip op. at 5
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,931,082 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01319 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–27 based on a reasonable likelihood that claims were obvious over Crossley and Albers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Patent Owner requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). Prelim. Resp. 14–25. We decline. Contrary to Patent Owner’s argument, we do not perceive Crossley as “cumulative” of Weaver. Id. at 17–20. Crossley explicitly describes two separate fluid delivery lines as follows: [Fluid distribution] Lines 428 and 428′ are preserved for the delivery of chemicals, such as hydrate inhibition fluids. Chemicals may be delivered from the lines 428, 428′ and then through the manifold 115 for treatment of flow lines, valves, and even the wellbores as appropriate. a disclosure. Thus, Patent Owner does not persuade us that exercising our § 325(d) discretion is appropriate where, on their face, the asserted references do not appear to be cumulative of the references cited during prosecution.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The paragraphs highlighted by Patent Owner include extensive citations in support of the statements made by Dr. Nikolaou. For example, paragraph 95 of Dr. Nikolaou’s declaration includes four citations to three different documents and refers back to a prior paragraph in the declaration. The noted paragraphs all appear to include support in the evidence of record. Further, Patent Owner only provides a general allegation without discussing any particular paragraph or opinion. Thus, it is unclear which opinions Patent Owner considers conclusory. Further, whether the declaration and Petition include similar or even identical statements is not a reason, by itself, to give the declaration little to no weight. As noted by Patent Owner (Prelim. Resp. 47–49), it is only when these statements are conclusory that they should be given little to no weight. See, e.g., TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination”). For these reasons, and at this stage, we decline Patent Owner’s invitation to give little to no weight to Dr. Nikolaou’s testimony as a whole.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had: at least a bachelor of science in chemical engineering, mechanical engineering, materials science, or metallurgical engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. A person having [more] education but less professional experience, and vice versa, may . . . also qualify as a POSITA. Pet. 3–4 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’394 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,841,394 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2023-00813 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds and dismissed the motion to exclude as moot.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“We decline to read in a requirement that the “program” of the preambles must be an “entire program.” In particular, we do not agree with Patent Owner that the limitation directed to “additional requests . . . during playing” or the mention in the specification of “additional data requests for the duration of playing” necessarily requires that the “playing” refers to an entire program. For example, the recited requests could relate to playing a portion of a program, a premise with which both declarants agree. Ex. 1103, 22:22–24:9; Ex. 1111 ¶¶ 13–16. Thus, we reject Patent Owner’s “entire program” interpretation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594 - Google LLC / The Walt Disney Company et al. v. Wag Acquisition, L.L.C.All claims unpatentablePTAB · Feb 27, 2024 · IPR2022-01411 · APJ John A Hudalla · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Hill and Aharoni; the Board did not reach the other instituted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. subsequently filed a similar petition along with a motion for joinder in IPR2023-00813. See IPR2023-00813, Papers 1, 6. We instituted an inter partes review and joined The Walt Disney Company, Disney Streaming Services LLC, Hulu LLC, and Netflix Inc. (“the joined parties”) as parties to this proceeding in a limited capacity. See IPR2023- 00813, Paper 11. Henceforth, we refer collectively to Google and the joined parties as “Petitioner.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have possessed at least a bachelor’s degree in computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner “largely agrees with Petitioner’s formulation” but adds the following “clarification”: “the level of skill . . . specified would include some theoretical understanding as well as some familiarity with basic internet protocols and tools for working with dynamic content and creating interactive web sites to handle such content.” PO Resp. 6–7 (citing Ex. 2007 ¶ 13). We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art. We also note that our analysis would not change if we adopted Patent Owner’s “clarification,” which would have the effect of increasing the level of ordinary skill. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“[I]t is generally easier to establish obviousness under a higher level of ordinary skill.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We decline to construe limitations 1b(i)–1b(ii) other than to agree with both parties (PO Resp. 11, 28–29; Pet. Reply 5) that the recited “data rate” refers to the capability of the data connection. See, e.g., Ex. 1001, 4:40–43 (“The bandwidth requirement of audio or video media refers to the data rate in bits per second that must be transmitted and received in order to listen to or view the material uninterrupted.”); Ex. 1002 ¶ 126; Ex. 1103, 26:19–29:7; Ex. 1111 ¶ 24. This is sufficient to dispose of the instant case. See Realtime Data, 912 F.3d at 1375.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded by Petitioner’s arguments. Via its citations to Aharoni and Dr. Polish’s testimony, Petitioner establishes that it was known in the art to send video data via TCP. See, e.g., Ex. 1002 ¶¶ 129–130, 185– 187; Ex. 1008, 2:10–15, 6:35–40, 6:52–54, 7:32–35, 9:64–66. Despite the fact that other protocols were available and may have been preferred for certain operating conditions (see PO Resp. 33 (citing Ex. 1004, 12:12–22; Ex. 2007 ¶¶ 83–85)), Petitioner has established the known suitability of using TCP for transmitting video data, which is all that is necessary to prove obviousness. See Intel, 21 F.4th at 800. In addition, Petitioner persuasively shows that an ordinarily skilled artisan would have been motivated to implement TCP (as taught by Aharoni) in Hill’s system to ensure reliable transport of video data, and would have expected success in doing so.10 See, e.g., Ex. 1002 ¶¶ 185–187. We disagree that Ravi and Aharoni teach away from using TCP. Ravi’s statement about UDP being easier to implement efficiently (Ex. 1004, 12:19–22) does not teach away because it does not “criticize, discredit, or otherwise discourage” the use of TCP. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Similarly, the fact that Aharoni’s system uses TCP for key frames while using UDP for other frames (Ex. 1008, 9:62–66, 10:5–21) is 10 We further discuss Petitioner’s rationale for combining Aharoni with Hill below in conjunction with the analysis of claims 4 and 5. See infra § II.D.6. Our comments in that section are also applicable to all of the claims in this ground. enough to show the suitability of TCP for video streaming under the Intel standard. Further, we credit Petitioner’s additional rationale about considering all frames as key frames in Hill’s system given its ability to skip frames. See, e.g., Ex. 1111 ¶¶ 92–94. Petitioner also establishes that, with TCP, video data is transmitted as fast as the data connection allows. See, e.g., Ex. 1002 ¶ 130; Ex. 1019, 271– 72; Ex. 1042, 2. Mr. Hoarty agrees with this premise (see Ex. 1103, 75:13– 76:6), and Patent Owner does not dispute this. See PO Resp. 30 (arguing only that Petitioner had not established how fast data is received with TCP). Further, both parties’ declarants agree that a source sending video data via the Internet as fast as the data connection allows necessarily results in the media player receiving the video data as fast as the data connection allows. See, e.g., Ex. 1103, 76:5–6, 78:9–18; Ex. 1111 ¶¶ 68–69. We also agree with Petitioner (Pet. Reply 13 & n.6) that Patent Owner’s arguments to the contrary are illogical. Although Hill includes teachings on how to treat inadequate source bandwidth (Ex. 1006, 8:20–10:24), this does not mean that—nonsensically—a source would transmit data into the data connection slower than the bandwidth and protocol allows. See, e.g., Ex. 1111 ¶ 78. Thus, we are persuaded that the combination of Hill and Aharoni would result in a TCP connection where video data is received as fast as the connection would allow.” slip op. at 40
Patent outcomesUS 9,729,594 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594
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.