- PTAB · Jun 16, 2025 · IPR2025-00232 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR on claims 17–19, 21–23, 33, 34, 59, 60, and 66 on all asserted grounds, finding a reasonable likelihood that claim 17 is obvious over Strub, Woo, Nagai, and Gleissner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“final written decision in this proceeding would be in June 2026. There is no trial date set in the district court case. See Ex. 1031, 3. Therefore, we find that factor 2 weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“preliminary responses, decisions on institution,3 and various exhibits filed in the Lectrosonics IPRs. See Prelim. Resp. 21; Ex. 2027, 10–16. The examiner subsequently signed the IDS with the footnote “ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.” Ex. 2028, 6–12. Further, the petitioner in IPR2018-01130, for example, asserted that the challenged claims were unpatentable over various combinations of Strub, Woo, Nagai, and Gleissner, and the petition, preliminary response, and decision on institution from that proceeding were provided to the examiner. See Ex. 1018, 5–6 (listing the asserted grounds); Ex. 1021, 7–8 (same); Ex. 2027, 14–15. Accordingly, the same art previously was presented to the Office.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 17–19, 21–23, 33, 34, 59, 60, and 66 of the ’207 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“the Board applied the BRI standard to the claims challenged in the Lectrosonics IPRs, so no claim interpretation was ever rendered under the Phillips standard and “issues regarding obviousness, which rely on such claim constructions, have also not been litigated.” Prelim. Resp. 22–24 (citing SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016)). Patent Owner argues that “[w]here a first IPR is decided under the BRI standard, and a second IPR concerning the same patent is to be decided under the Phillips standard, ‘collateral estoppel . . . is not appropriate.’” Id. at 23 (citing Ebates Performance Mktg., Inc. v. Int’l Bus. Machines Corp., IPR2022-00646, Paper 56 at 10 (PTAB Oct. 11, 2023)). We agree with Patent Owner based on the current record. Although the Lectrosonics IPRs involved patents from the same family as the ’207 patent, which recite many similar claim limitations, the Lectrosonics IPRs were all decided using the BRI standard, not the Phillips standard. Thus, no claim interpretation has been made using the standard that will be applied in this case, and the asserted prior art has not been applied to claims interpreted according to the standard in this case. Accordingly, on this record, we are not persuaded that collateral estoppel applies to any of the disputed issues in this proceeding. See DDR Holdings, LLC v. Priceline.com LLC, 122 F.4th 911, 918–919 (Fed. Cir. 2024) (“‘Because the Board applies the broadest reasonable construction of the claims while the district courts apply a different standard of claim construction as explored in Phillips,’ a party is not collaterally estopped in district court proceedings by the Board’s constructions during IPR.”); SkyHawke, 828 F.3d at 1376. Regardless, we determine that Petitioner has shown a reasonable likelihood of prevailing on its asserted ground as to claim 17 based on the preliminary claim interpretations applied herein. See supra Section II.E.” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,276,207 - PTAB · Jun 16, 2025 · IPR2025-00231 · APJ Matthew J Mcneill · IPR · Institution
The Board instituted IPR on claims 1–6, 9, 10, 13, and 16–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is obvious over Strub, Woo, Nagai, and Gleissner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential). In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › §315(b) time barNot reached
“Pursuant to our authorization provided by email (Ex. 3003), Patent Owner filed a motion to terminate on the basis that the Petition is time-barred under 35 U.S.C. § 315(b). Papers 15 (confidential), 16 (public redacted). Petitioner filed its response on June 5, 2025. Paper 20. The parties’ briefing did not permit sufficient time to decide the motion prior to the three-month statutory deadline for determining whether to institute an inter partes review. See 35 U.S.C. § 314(b). We express no opinion at this time on Patent Owner’s motion to terminate, which will be decided in due course.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–6, 9, 10, 13, and 16‒20 of the ’902 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“We agree with Patent Owner based on the current record. Although the Lectrosonics IPRs involved the ’902 patent and other patents from the same family as the ’902 patent, which recite many similar claim limitations, the Lectrosonics IPRs were all decided using the BRI standard, not the Phillips standard. Thus, no claim interpretation has been made using the standard that will be applied in this case, and the asserted prior art has not been applied to claims interpreted according to the standard in this case. Accordingly, on this record, we are not persuaded that collateral estoppel applies to any of the disputed issues in this proceeding. See DDR Holdings, LLC v. Priceline.com LLC, 122 F.4th 911, 918–919 (Fed. Cir. 2024) (“‘Because the Board applies the broadest reasonable construction of the claims while the district courts apply a different standard of claim construction as explored in Phillips,’ a party is not collaterally estopped in district court proceedings by the Board’s constructions during IPR.”); SkyHawke, 828 F.3d at 1376. Regardless, we determine that Petitioner has shown a reasonable likelihood of prevailing on its asserted ground as to claim 1 based on the preliminary claim interpretations applied herein. See infra Section II.E.5.h.” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,929,902 - PTAB · Jun 16, 2025 · IPR2025-00230 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 1–4, 7–9, 15, 17, 19, 20, and 22–27 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Strub, Woo, Nagai, and Gleissner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential). In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–4, 7‒9, 15, 17, 19, 20, and 22‒27 of the ’443 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We conclude that interpretation of the term “wearable” is necessary to resolve the parties’ dispute. Patent Owner argues that the ’443 patent describes wearability of local audio devices and requires the local audio device to include an audio input device, such as a microphone, that is worn by the performer and connects to the performer’s local audio device to capture the performer’s isolated audio track. Prelim. Resp. 24 (citing Ex. 1001, code (57), col. 7, l. 65‒col. 8, l. 4, col. 8, ll. 59‒62, col. 21, ll. 60‒61). Patent Owner further argues that the prosecution history of the ’443 patent “clarifies that ‘wearable’ requires the audio device to be ‘suitable to be worn by the performer’ and excludes devices that are merely portable (e.g., able to be carried in a backpack).” Prelim. Resp. 24. Patent Owner argues that the Notice of Allowance for the ’443 patent distinguishes 5 In the district court case, Petitioner argued that “wearable” means “suitable and in a condition to be worn” and Patent Owner argued that the term means “[s]uitable to be worn by a performer.” See Ex. 2006, 13–14. between “portable” and “wearable” where the prior art of record taught a portable device that could be carried in a backpack, which the Examiner found did not teach a “wearable” limitation of the claims at issue. Id. at 25 (citing Ex. 2017). We agree with Patent Owner’s analysis to the extent it specifies that the audio device is “suitable to be worn,” but do not include “performer” in the interpretation, as claim 1 recites an audio device wearable by a “creator of said locally generated audio.” See Prelim. Resp. 24‒25. Based on the current record, we interpret “wearable” as “suitable and in a condition to be worn.”” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We conclude that no express interpretation of “locally generated audio” is necessary to determine whether to institute an inter partes review because, even if Patent Owner’s interpretation is adopted, Petitioner has shown sufficiently that Strub teaches “locally generated audio.” See infra Section II.E.5.c; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)). The parties, however, are encouraged to address interpretation of the phrase during trial.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,711,443 - PTAB · Mar 12, 2025 · IPR2024-01239 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of all challenged claims, finding a reasonable likelihood that claim 1 is unpatentable over Lefebvre and Chua.
RulingsInstitution decision- Other 314aDenied
“The primary basis for Patent Owner’s argument is the fact that the ’111 patent has been subject to previous inter partes reviews filed by other parties.2 Id. at 14–19. A related fact—not fully addressed by Patent Owner—is that Patent Owner has staggered-in-time its suits alleging infringement of the ’111 patent against different parties. Patent Owner sued Cisco Systems in July 2022, but waited a year to separately file suit against Juniper Networks and Petitioner. IPR2023-00554, Ex. 1010; IPR2024- 00037, Paper 2. Patent Owner was not obligated to sue Petitioner at the same time that it sued Cisco Systems. Similarly, Petitioner was under no obligation to request to join Cisco System’s earlier filed inter partes review. See Prelim. Resp. 16. Rather, as acknowledged by Patent Owner, Petitioner waited to file the present inter partes review until the last day allowed under statute. Id. at 15, 17. Based on the circumstances before us, we do not agree with Patent Owner that it would be appropriate to enforce a deadline on Petitioner that is earlier than the deadline outlined by statute. See id. at 16.” slip op. at 3
- 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also provides an extensive discussion of the reasons to combine Chua with the system of Lefebvre, such as due “to Chua’s more detailed teachings regarding actions an SDN controller takes in response to information from security-related services like DPI.” Id. at 25 (citing Ex. 1002 ¶ 102); see also, e.g., id. at 24–26 (discussing reasons to combine). Petitioner also provides a detailed discussion of how the combined teachings of Lefebvre and Chua teach the method steps of claim 1. Id. at 32–39; see also Ex. 1002 ¶¶ 115–136. We have reviewed the Petition and supporting evidence and determine that the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing that claim 1 unpatentable over the combination of Lefebvre and Chua.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,652,111
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.