- Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01377 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review pursuant to 35 U.S.C. § 6(b). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’227 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Mar 17, 2025 · IPR2024-01310 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–15 and all four asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Petitioner argues that “a POSA would have understood a ‘socket’ to be a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Pet. 26 (citing Ex. 1001 ¶ 170). Thus, Petitioner argues, an “event socket” is “a socket where information about one sporting event is provided to a VCD.” Id. At this time, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 26) are not disputed by Patent Owner. Prelim. Resp. 8; see id. at 52–53 (using Petitioner’s proposed construction). At this preliminary stage in the proceeding, we use Petitioner’s proposed construction for “socket” and “event socket.”” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“It does not appear that the ’218 patent defines or describes “online gaming information.” The closest references in the specification are two mentions of “game-related activities” that are said to include “online gaming, board games, chess matches, [and] role-playing games.” Ex. 1009, 4:31–32, 8:16–17. These references do not support Patent Owner’s assertion that “online gaming information” should be construed as requiring a relationship to placing bets. Dr. Rubin does not provide any evidence to support the opinion that online gaming information would be “information relevant to placing bets.” Ex. 2001 ¶ 240. However, even using Patent Owner’s definition of “online gaming information” as requiring such information to be “relevant to placing bets” (Prelim. Resp. 58), Petitioner establishes a reasonable likelihood of prevailing in its unpatentability challenges, as we discuss in greater detail below. For purposes of this Decision, we apply Patent Owner’s construction.6” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Mar 17, 2025 · IPR2024-01311 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 16–30 on all asserted grounds, finding a reasonable likelihood that Genius Sports would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the challenged claims of the ’218 patent have an apparent effective filing date after March 16, 2013, the AIA version of § 103 applies. Ex. 1009, codes (22), (60), (63). Our determinations and findings herein would not change if the pre-AIA provisions applied. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Parallel petitionsInstituted
“The Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, guides that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. Because we agree with Petitioner’s arguments with respect to the claims and the identity of the prior art used, we consider the merits of the instant petition.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’218 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’218 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture. Pet. 17–18 (citing Ex. 1001 ¶¶ 72–76). Petitioner additionally asserts that, “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. at 18. Patent Owner asserts: A person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols. Prelim. Resp. 8 (citing Ex. 2001 ¶ 96). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Mar 13, 2025 · IPR2024-01307 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 19–25 and 27–30 on both obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 claims 19–25 and 27–30 of the ’687 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 15 (citing Ex. 1001 ¶¶ 72–76). Patent Owner cites testimony from Dr. Rubin and contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 10 (citing Ex. 2001 ¶ 103). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 105), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’687 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“ordinary meaning. Pet. 6. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first/second event information is provided to VCDs [viewer client devices].” Id. at 39 (citing Ex. 1001 ¶ 352). Thus, Petitioner argues that an “event socket” is “a socket where information about each sporting event is provided to VCDs.” Id. Petitioner additionally proposes constructions for certain means-plus-function limitations in claims 27–30. Pet. 7–9. Regarding the means-plus-function limitations in claims 27–30, Patent Owner argues that only relevant construction pertains to this limitation of claim 27: “means for transmitting the first event information to at least the first viewer client device via a first event information communication channel that is different from the first video communication channel.” Prelim. Resp. 8–10. Patent Owner agrees with Petitioner’s construction of this term but notes certain additional citations that Patent Owner contends supports the construction. Id. at 9–10. Otherwise, Patent Owner states that “the Board need not construe any claim terms aside from the means-plus-function limitations.” Id. at 8. For purposes of this Decision, we apply Petitioner’s constructions of “socket” and “event socket.” Regarding the means-plus-function limitations in claims 27–30, we apply all of Petitioner’s constructions with one exception. Specifically, based on the structure and dependency of claim 30, we determine preliminarily that the preamble of claim 30 is non-limiting and does not require construction as a means-plus-function limitation. We determine that no other aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For the reasons given below, we find that Petitioner’s arguments are supported sufficiently by the evidence in the preliminary record before us at this early juncture, and that Patent Owner’s arguments do not undermine Petitioner’s showing. For example, we are persuaded preliminarily that Petitioner’s proposed combination would have improved latency issues in Ellis’s system. See Pet. 19–23; Ex. 1001 ¶¶ 106–115. This is supported by Spivey’s disclosure that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data “to the subscribed connected client devices substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”). We disagree with Patent Owner (Prelim. Resp. 27) that “Petitioner manufactures a data latency problem in Ellis, without any explanation as to why a[n ordinarily skilled artisan] would understand one to exist.” The portion of Spivey cited by Petitioner describes that its techniques reduce latency, thus “providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28; see also id. ¶ 96 (describing improvements of “at least two orders of magnitude” as compared to “conventional time periods of legacy devices”). This teaching shows sufficiently, for purposes of institution, that artisans in the field would have known to consider the problem of latency in delivering live data. Moreover, Patent Owner’s argument that Ellis pertains to “viewing and tuning” and Spivey is not relevant to “how sports viewers commonly watch and interact with displayed sporting events” (Prelim. Resp. 28–29), as well as Dr. Rubin’s related testimony (Ex. 2001 § VI.A.1, ¶¶ 220–223), are based on only a subset of the teachings of both references, rather than the teachings of the references in their entirety. For example, Ellis describes providing real-time data such as sports scores (see, e.g., Ex. 1016 ¶ 41), and Spivey describes that its live data feeds are generated by computing devices associated with a live event (Ex. 1017 ¶ 37). We are mindful that the teachings of the references must be considered as a whole, from the perspective of an ordinarily skilled artisan. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008) (“What a prior art reference discloses or teaches is determined from the perspective of one of ordinary skill in the art.”); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (noting that when evaluating claims for obviousness, “the prior art as a whole must be considered”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,805,687 - PTAB · Mar 13, 2025 · IPR2024-01305 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–9 over all asserted grounds, finding a reasonable likelihood that the challenged claims would be shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 claims 1–9 of the ’687 patent on all grounds of unpatentability presented.” slip op. at 2
- Parallel petitionsOther
“1 Of note, Petitioner concurrently filed another petition challenging claims 19–25 and 27–30 of the ’687 patent in IPR2024-01307. Pet. 3–4; Paper 3, 3. Petitioner also filed a ranking of the two petitions in which it ranked the petition in IPR2024-01307 first and the instant Petition second. Paper 3, 3. Notwithstanding, Patent Owner does not put forth any arguments seeking discretionary denial under 35 U.S.C. § 314(a) related to Petitioner’s use of more than one petition against the ’687 patent. Moreover, we are satisfied by Petitioner’s stated reasons for filing two petitions. See Paper 3, 2–3.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 13 (citing Ex. 1001 ¶¶ 72–76). Patent Owner cites testimony from Dr. Rubin and contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 8 (citing Ex. 2001 ¶ 99). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 101), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’687 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“ordinary meaning. Pet. 6. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 37 (citing Ex. 1001 ¶ 352). Thus, Petitioner argues that an “event socket” is “a socket where information about one sporting event is provided to a VCD.” Id. Patent Owner states that “[e]xcept for the ‘event socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.” We determine that no other aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,805,687 - Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 10, 2025 · PGR2024-00049 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show the patent was eligible for PGR; the challenged claims were supported by the 2006 priority application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006. 2. Conclusion: PGR Eligibility For the foregoing reasons, and based on the record before us, we determine that Petitioner has not demonstrated that it is more likely than not that the ’202 patent has, or had, at least one claim having an effective filing date on or after March 16, 2013. Accordingly, we determine that the ’202 patent is entitled to the filing date of the ’634 application (October 18, 2006), and, thus, the ’202 patent is not eligible for post-grant review.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Accordingly, the ’202 patent consistently and repeatedly characterizes the invention as incorporating tobacco in some form and ties the stated benefits of the invention to the inclusion of tobacco. Moreover, the Specification is directed to smoking articles containing tobacco, all of the embodiments include tobacco, and “the present invention” is described as a smoking article, where the smoking article includes tobacco. Consequently, we determine that “smoking article” as it is used in the challenged claims is limited to devices that include tobacco. See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1361 (Fed. Cir. 2022) (finding claimed “lip” is limited to “extrudable plastic materials” where specification states that “the device of the present invention is constructed of extrudable plastic materials” and “emphasizes the benefits of using extrudable plastics and describes them as benefits of the invention as a whole”); Poly-Am., L.P. v. described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”); Phillips v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner’s argument is dependent on accepting Petitioner’s assertion that the claims include a smoking article that does not contain tobacco, which we have not done. Instead, as set forth above, we construe “smoking article” as being limited to devices that include tobacco. See § II.B.2, supra. Based on our construction of “smoking article” and the evidence of record in this proceeding, we determine that the challenged claims are supported by the specification of the ’202 patent, which is identical to the specification of all of the continuations in the chain leading back to the October 18, 2006 that the specification of the ’202 patent and every patent in its priority chain “have identical specifications”); Prelim. Resp. 13 (noting that Petitioner does not identify other limitations in the challenged claims “allegedly lacking support in the ’202 patent family’s applications dating back to U.S. App. No. 11/550,634, filed on October 18, 2006”). Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006.” slip op. at 17
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,925,202 - PTAB · Mar 6, 2025 · IPR2024-01309 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 19–25 and 27–30, finding a reasonable likelihood that claims in both § 103 grounds would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’697 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this early stage, therefore, for the terms which are not contested (all except for the limitation 27.3 means plus function term, addressed below) we use Petitioner’s proposed constructions for the means-plus-function terms with one exception. Specifically, based on the structure and dependency of claim 30, we determine preliminarily that the preamble of claim 30 is non-limiting and does not require construction as a means-plus-function limitation. We use the ordinary and customary meaning of the other claim terms and we decline to provide an express construction of any other claim term. slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues “under” Petitioner’s proposed construction of “socket,” the Petitioner is deficient. Prelim. Resp. 39–40. At this early stage, Patent Owner does not dispute Petitioner’s construction for either “event socket” or “socket,” and, indeed, applies Petitioner’s proposed construction of “socket.” Id. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.”” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,425,697 - PTAB · Mar 6, 2025 · IPR2024-01308 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–9 on all asserted grounds, finding a reasonable likelihood that claims 1, 7–9 are obvious over Ellis and Spivey, claims 2–6 over Ellis, Spivey, and Herzog, and claims 1–9 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’697 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. We, therefore, consider the merits of the instant petition, and, for the reasons given below, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“At this early stage, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 37) are not disputed by Patent Owner. Prelim. Resp. 10. Neither party provides an express construction for any other claim term. See generally Pet.; Prelim. Resp. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this preliminary stage in the proceeding, we use Petitioner’s proposed construction for “socket” and 4 POSA and POSITA refer to a person of ordinary skill in the art. “event socket” and the ordinary and customary meaning of the other claim terms. We decline to provide further analysis or an express construction of any other claim term as doing so is not needed to resolve the dispute between the parties.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,425,697 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,400,358
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.