- PTAB · Dec 17, 2025 · IPR2025-01072 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–3, 5–11, 13–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that Kido anticipates claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” Sur-reply 2. We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1001, 5:16–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’014 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 32–36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Id. at 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,011,014 - PTAB · Dec 16, 2025 · IPR2025-01073 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR of claims 1–5, 7–12, 14–18, and 20 on all petitioned grounds, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1005, 5:13–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’024 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 33–35. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Pet. 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129. Patent Owner next contends that Kido does not disclose a first payout that is “for the spin of the roulette wheel.” Prelim. Resp. 29. Patent Owner’s argument is premised on the cumulative nature of Kido’s Prog bonus – it builds with every spin of the roulette wheel until won. Id. (“Each time the wheel is spun, 0.5% of the amount wagered is added to the progressive jackpot, and thus, the jackpot’s value reflects multiple spins of the roulette wheel.”). Thus, according to Patent Owner, the value of the jackpot is determined using multiple spins of the roulette wheel and is not “for a spin of the roulette wheel” as claimed.” Id. at 30. The claims, however, only require a first payout that is higher than a second payout. Nothing prohibits the higher payout from accumulating from prior spins of the roulette wheel because, when it is actually won, it will be for that last spin of the roulette wheel. Ex. 1005, 8:35–36 (“indicating that the first player is to be paid at the first payout for the spin of the roulette wheel”). Regardless of how Kido’s Prog bonus accumulated, it is paid for a spin of the roulette wheel – at that juncture Kido discloses each claim element. Anticipation occurs when a prior art reference discloses every element of a patent claim at a point in time, as Kido does with a single spin of the roulette wheel that pays the Prog bonus. As persuasively explained by Petitioner, “the steps of Figure 12 (including A13) occur within a single round of roulette, for a single spin of the roulette wheel, until the routine ‘returns to the step of A1 and is transited to a next game.’” Pet. 39 (quoting Ex. 1007 ¶ 233).” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,629,024 - Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Technology (Shenzhen) Co., Ltd. And Throughtek Co., Ltd.All claims unpatentablePTAB · Dec 15, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Final written decision
Claims 1–3, 5, 7–13, 15–19, and 23–25 are unpatentable: claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 as anticipated by Zhang; all challenged claims also as obvious over at least one …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 5 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or provide a proposal of its own. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“construction of “feature flag” is inconsistent with the language of claim 8, which states that “the feature flag indicates that the running state of the second apparatus is the sleep state.” Petitioner also argues that Patent Owner’s proposal is not supported by claim 24, which depends from claim 23 and states that “the feature flag is located at a header of the sleep login packet.” Id. at 3. We agree with Petitioner. The plain language of claim 8 states what a feature flag indicates. Claim 24 recites where the feature flag is located. Neither claim suggests any of Patent Owner’s additional limitations.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“[A] prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (alteration by Federal Circuit)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (alteration by Federal Circuit); In re Petering, 301 F.2d 676, 681 (CCPA 1962)). For the reasons explained below, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 are anticipated by Zhang. slip op. at 16
Patent outcomesUS 10,602,448 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - PTAB · Dec 12, 2025 · IPR2025-01327 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of prevailing on the Schwan-Lee and Schwan-Lee-Strickland obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’655 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent, and two years of work experience with network devices and communication technologies. EX1003, ¶¶17–19. Additional education might compensate for less experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 17–19).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The ’655 patent Specification states that: The topology data table 21 of the online server 20 is mainly recorded with a link data 49 between each of the P2P devices 41– 46 within the P2P device community. The link data 49 refers to the connection relationship between the P2P devices 41–46, which includes, but is not limited to, the connection structure, connection data and/or locations of connection. Ex. 1001, 4:51–57. On this preliminary record, we agree with Petitioner that the term “link data” is a “connection relationship between the P2P devices.” This meaning is consistent with the ordinary meaning of the term within the context of the claim, that is, “link data” means data on the links (connections) between each of the P2P devices, where the Specification provides a more fulsome meaning that the term includes, at least, “the connection structure, connection data and/or locations of connection.” See id. at 4:55–57. We invite the parties to provide additional briefing on the construction of this term during trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Lee discloses that the P2P overlay is generated with the overlay generation unit 220 that generates the P2P overlay by analyzing information regarding “the corresponding application service, the peer, and the network,” where the network information “may include a network topology, a maximum bandwidth, a current network usage, [and] a transmission delay time, and the like.” Ex. 1005 ¶ 54. We determine that this disclosure provides support for Mr. Lett’s testimony that “Lee describes techniques for changing an overlay in response to changing network characteristics,” which could be beneficial. Ex. 1003 ¶ 48. Accordingly, on this preliminary record, we find this evidence is sufficient to support a rationale to combine Schwan and Lee. See KSR, 550 U.S. at 401 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious.”).” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,727,655 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Dec 1, 2025 · IPR2025-01010 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
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). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–15 of the ’322 patent. Accordingly, we institute an inter partes review of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. work or research experience in the field of content delivery management or networks,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 10 (citing Ex. 1003 ¶¶ 61–63). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“On the current record, we determine that the “modified embedded resource” may be a “link.” Both Petitioner and Patent Owner point to claim 13, which explicitly states that a modified embedded resource is a link. Because claim 13 depends from claim 1, claim 1 must be broad enough to encompass a modified embedded resource that is a link. Patent Owner also points to a statement in the ’322 patent that “[t]he embedded resource is a link.” Prelim. Resp. 18 (citing Ex. 1001, 4:26–31). Patent Owner argues that every embodiment of the ’322 patent “involves embedding the ‘modified embedded resource’ in another resource when it is returned to the client.” Paper 16, 2–3. Patent Owner cites to description in the ’322 patent of a “document” or a “page” returned to the requesting client. Id. (citing Ex. 1001, 4:42–48, 7:48–55). However, claim 15 does not return the modified embedded resource to the client, only the origin system. Claim 1 recites only that the “modified embedded resource” is returned to the client device with the content resource. Neither claim 1 nor claim 15 recite returning a document or a page containing the modified embedded resource, only the modified embedded resource itself. We acknowledge some tension with the adjective “embedded,” which Patent Owner argues requires that the embedded resource be embedded in something. Paper 16, 1–3. However, the clear description of an embedded patent, more strongly guides our preliminary construction.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are persuaded by Petitioner’s assertions for limitations [15pre]– [15a]. Dr. Mowry attests that Verna’s client browser sends a URL 28 to a content provider 22, which is then forwarded to broker 25, which selects the appropriate cache server to serve the content and returns a re-written URL to the content server that received the client request. Ex. 1003 ¶ 67 (citing Ex. 1005 ¶¶ 12, 26, 27, 37). On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API as acting as bridge establishing a connection between client and server. Ex. 2010 ¶ 50. Verma also meets Dr. Russ’s characterization of an API as “an interface that allows the client to communicate with an application executing on the server.” Ex. 2010 ¶ 50. Dr. Russ describers Verma’s broker as sending availability inquiries from the content provider (client) to servers 23 and 24 to “find out whether they currently store the requested movie file,” and provide that information back to the content provider (client). Id. ¶ 53. On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API acting as an interface that allows the client to provides availability information to the broker). Consequently, we determine that Petitioner has shown Verma to disclose limitation [15a] for purposes of institution on the current record.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,057,322 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 28, 2025 · IPR2025-00969 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1, 2, 22–24, and 26–46 over all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kenner.
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). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1, 2, 22–24, and 26–46 of the ’903 patent. Accordingly, we institute an inter partes review of the ’903 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 5 (citing Ex. 1003 ¶ 47). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 26. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’903 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim construction at this stage of the proceeding. Pet. 5; Prelim. Resp. 26. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“On the current record, we are persuaded by Petitioner that Kenner’s video ID is associated with a shared repeater server. As noted by Patent Owner, Kenner’s video ID includes content coordinate data that may “match with the regional IMs [repeater servers] that have subscribed to that type of file.” Prelim. Resp. 35 (citing Ex. 1005, 36:20–30). Kenner describes that content coordinate data is maintained on a database of each IM, which includes the Internet address of all other connected IMs and content coordinate data describing the type of files stored by the SRUs of each IM. Ex. 1005, 41:1–6. That content coordinate data, stored in each video ID and each IM, teaches the claimed association of alias with repeater server. Because the content coordinate data directs the PIM to the repeater server(s) having that particular data, Kenner’s user does not always access the same repeater server, and Patent Owner’s argument is unavailing.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,478,903 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. 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 in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. 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 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,924,573 - Google LLC v. Eyesmatch Ltd.Some claims unpatentablePTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23
Patent outcomesUS 8,982,110 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Eyesmatch Ltd.All claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00810 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4. Thus, on the whole, Petitioner’s shifting, scattered arguments do not persuasively address limitation 1[f]. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Haan and Francois. And Petitioner’s arguments and evidence addressing claims 2–6, 10–12, 16, and 17 do not cure the foregoing deficiencies in the challenge of claim 1. Pet. 46–52. Accordingly, Petitioner has not shown by a preponderance of the evidence that any of claims 1–6, 10–12, 16, and 17 would have been obvious over Haan and Francois.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to correct image distortions and provide a more realistic mirror image.” Pet. 52–55; Ex. 1003 ¶¶ 242–249. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 35, 38–39 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.Cir.2009)). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations. In sum, we find for the reasons given that Petitioner has demonstrated by a preponderance of evidence that to a person of ordinary skill, Rosenberg alone or with Park teaches or suggests limitation 1[f].” slip op. at 44
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“shows by a preponderance of the evidence that limitations 1[c] and 1[e] are taught or suggested by Rosenberg and Park, in combination. Pet. 58–64; PO Resp. 39–40; Reply 19–20; Sur-reply 19. Petitioner persuades us that limitations 1[c] and 1[e], would have been obvious over Rosenberg and Park, in combination. Pet. 58–64; Reply 19–20. Patent Owner’s counter arguments are unavailing for multiple reasons. Patent Owner’s arguments fail because they improperly attack Rosenberg’s teachings individually, rather than addressing Petitioner’s combination of the references. PO Resp. 39–40; Sur-reply 19. This is fatal to Patent Owner’s arguments. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Petitioner presents persuasive arguments and evidence that the references, in combination, teach limitations 1[c] and 1[e], including persuasive evidence that the references’ tilting, resizing, and zooming meet the claim limitations’ “adaptive transformation mapping . . . to generate modified images that appear to be captured from a different point of view” that “corresponds to an image taken from a different angle and a different distance.” Pet. 58–64 (citing Ex. 1001, 3:26–28; Ex. 1003 ¶¶ 65–67, 253–268; Ex. 1006 ¶¶ 26–28, 50, 52, 61, 75 ; Ex. 1011 ¶¶ 50–51, 59, Figs. 6A–6B, 7, 8, 14, 15; Ex. 1019, 16–20; Ex. 1021, 2:19–27, 17:19–24, 21:60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Reply 19–20 (citing Ex. 1003 ¶¶ 253–268; Ex. 1021, 17:17–23; Ex. 2012, 63:13–22, 111:13–21). Regarding tilting, after noting the ’110 patent’s disclosure (incorporated from the ’109 patent) of performing tilt transformations (Pet. 10–11), Petitioner advances persuasive evidence that Park discloses such a tilting transformation, thereby teaching the claimed “different angle” (id. at 61–63). Regarding resizing and zooming, citing extensive discussion in the ’110 patent (incorporated from the ’109 patent) of resizing and/or zooming to address the effects of varying distance between an object and a camera, Petitioner and Dr. Karam explain that the prior art’s zooming and resizing meet the claimed “different distance.” Pet. 63 (Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Ex. 1003 ¶ 265 (citing Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11). In its counterarguments, Patent Owner suggests that zooming and resizing do not account for “occlusion effects,” but Patent Owner does not persuasively tie this argument to the ’110 patent, failing to cite any portion of the ’110 patent that evinces its invention addresses such effects. PO Resp. 23–25, 39–40.” slip op. at 39
Patent outcomesUS 8,982,110 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 10, 2025 · IPR2025-00806 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood of success on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’517 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977). To comply with the “written description” requirement of 35 U.S.C. § 112, first paragraph, an applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted). The invention claimed does not have to be described in ipsis verbis to satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). The question of written description support should not be confused, however, with the question of what would have been obvious to the artisan. Whether one skilled in the art would find the claimed invention obvious in view of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559 F.2d 588, 593 (CCPA 1977). “A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d at 1572.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“motivated to combine Beaumont and Hasan. Pet. 13–14. Petitioner argues that “Beaumont does not describe a specific interface for manually entering [policy and rules] preferences, Hasan discloses a GUI for exactly this type of policy specification.” Id. at 14 (citing Ex. 1003 ¶ 70). Petitioner asserts that Hasan discloses that its Java-based, “platform independent” GUI takes the form of a “familiar tree structure” and allows administrators to “configure device and service configuration data and policy information.” Id. (citing Ex. 1006, code (57), 7:7–26, 8:19–29, 18:9–20). Petitioner asserts that the combination of Beaumont and Hasan would have been straightforward, and a person of skill “would have been motivated to incorporate Hasan’s GUI so that administrators could conveniently configure preferences for Beaumont’s DNS servers through an intuitive interface.” Id. (citing, inter alia, Ex. 1003 ¶¶ 70–71; Ex. 1007 ¶ 23). Patent Owner does not present any arguments on the rationale to combine. See generally Prelim. Resp. We find that at this juncture Petitioner has presented sufficient rationale to combine Beaumont and Hasan.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We agree with Patent Owner that its understanding of a policy as a rule is consistent with the disclosure in the ’517 patent that “a policy may be created by generating a decision tree representing the ATC rules.” See Ex. 1001, 9:1–3. We do not agree with Patent Owner, however, that Beaumont in combination with Hasan does not disclose the claimed policy features as claimed. As discussed above, Petitioner relies upon Beaumont in combination with Hasan with its teachings on the use of Java-based GUIs in the form of a tree structure that allows administrators to configure device and service configuration data, as well as policy information. See Ex. 1006, code (57), 7:7–26, 8:19–29. For the policy teachings, Petitioner relies upon Beaumont’s “content provider DNS server that directs requests (traffic) according to a preference table (policy).” Pet. 15–16 (citing Fig. 1, ¶¶ 6, 17, 23). Petitioner also asserts that the Beaumont-Hasan GUI would enable an administrator to set policies for a selected content delivery server to allow setting server preferences and rules. Id. at 17–18 (citing, inter alia, Ex. 1007 ¶¶ 76–77). In support, Dr. Lin testifies that: The Beaumont-Hasan GUI would enable an administrator to select a content delivery server (e.g., in Japan) and set policies for that server. Hasan, 8:30–36, 10:25–34, 10:53–67; Beaumont, [0031]. For example, given the description in Hasan, selecting a server would bring up a menu enabling an administrator to assign the preferences shown in Fig. 3 of Beaumont. Hasan, 10:25–34; Beaumont, Figs. 2, 3, [0029]–[0031]. A POSITA would thus have recognized the combined GUI to “support[] the setting of said at least one policy using a decision tree representing rules” because it is presented in a “familiar tree structure” and would allow users to set server preferences and rules. Ex. 1003 ¶ 77 (emphasis added). Beaumont provides support for Dr. Lin’s testimony. Beaumont discloses that “rules such as selecting one [a server] based on user preferences can be used . . . [f]or example, a preference number can be assigned to each content delivery server and a destination domain.” Ex. 1007 ¶ 31. Beaumont further states that “FIG. 3 shows an illustrative example of incorporating preference numbers in a column.” Id. Thus, contrary to Patent Owner’s arguments, Beaumont discloses that rules or policies, represented by the preference number, are represented in the table shown in Figure 3 of Beaumont. Dr. Lin also testifies that in the Beaumont-Hasan combination “the GUI supports the setting of” policy is taught. Ex. 1003 ¶ 77. Hasan provides support that service policies can be modified by the use of a GUI. See Ex. 1006, 8:30–36, 10:25–34, 10:53–67. Accordingly, in the combination of Beaumont and Hasan, wherein the preference database is replaced by the GUI decision tree, Petitioner has provided sufficient evidence at this juncture that the combination of Beaumont and Hasan teaches that the GUI obtains a policy, the preference number, for the direction of network traffic, where the GUI supports the setting of the policy using a decision tree representing rules.” slip op. at 19
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,645,517
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.