- PTAB · Nov 7, 2025 · IPR2025-00913 · APJ Brian P Murphy · IPR · Institution
The Board instituted review of claims 1–30 on all asserted grounds, finding a reasonable likelihood that claims 1–25, 27–28, and 30 are obvious over Menon, Trefethen, RS6000, and POEref.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. We determine that the Petition satisfies the reasonable likelihood of prevailing standard under 35 U.S.C. § 314(a). We begin our analysis with a discussion of the Menon, Trefethen, RS6000, and POEref references. slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the Petition’s formulation of the level of ordinary skill in the art, which is consistent with the description in the ’034 patent, the prior art of record, and the testimony of both experts.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner relies on the ordinary and customary meaning of the claim terms consistent with the Phillips standard. Pet. 12–13 (citing 37 C.F.R. § 42.100(b)). The Petition addresses the construction of “peer-to-peer architecture” recited in independent claims 1 and 30 of the ’034 patent, a limitation we need not construe to decide the institution question. Id. at 13; Cir. 2011) (“[C]laim terms need only be construed ‘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)). Patent Owner contends that “no claim construction is required” to address the Petition’s asserted deficiencies. Prelim. Resp. 6. Patent Owner also contends, however, that the Petition relies on a “novel claim construction” of limitations [1.4.1] and [1.5.1]—“second [third] hardware processor with a plurality of processing cores”—to support Petitioner’s obviousness argument. Id. at 11–12.8 Patent Owner challenges the Petition’s reliance on “single core processors on different chips,” such as the Power3 single-core processors of the Symmetric Multi- Processor (“SMP”) configuration disclosed in the RS6000 reference, as a disclosure of limitations [1.4.1] and [1.5.1]. Id. Patent Owner contends that such single-core processors on different chips do not satisfy limitations [1.4.1] and [1.5.1] because the ’034 patent “claims only multicore processors.” Prelim. Resp. 5 (citing Ex. 1001, 7:15–27). Petitioner responds in part as follows: To the extent PO is implicitly arguing that RS6000’s “four, eight, twelve, or sixteen 375 MHz 630FP 64-bit processors” do not teach the recited “cores,” Patent Owner’s argument excludes embodiments described in the ’034 patent’s specification. The ’034 patent describes “[p]rocessor cores [as] generally independent microprocessors.” Ex.1001, 5:14–15. Patent Owner’s attempt to exclude RS6000 from the scope of the claims 8 Pursuant to the Board’s Order on Related Matter Updates (Paper 14), the parties filed the September 26, 2025 Claim Construction Order entered in the co-pending District Court litigation in this proceeding. Ex. 1085. The District Court Claim Construction Order did not construe the claim phrase “hardware processor with a plurality of processing cores.” Id. patent where the processor has independent microprocessors. Patent Owner’s attempt to distinguish RS6000’s Symmetric MultiProcessor as a “configuration” (Paper 8, 24) also fails because a “Symmetric MultiProcessor configuration” is no different than the ’034 patent’s description of a configuration of independent microprocessors. Id. Paper 9, 30.9 It is apparent there is a dispute over the plain meaning of Limitations [1.4.1] and [1.5.1], “a second [third] hardware processor with a plurality of processing cores,” recited in the independent claims.10 The parties are ordered to propose and support a particularized plain meaning or other construction of Limitations [1.4.1], [1.5.1], and [30.1.2] in their briefs. The parties are ordered to analyze the relevant claim language and cite to the specification and prosecution history in support of their claim construction, where applicable, with particular attention to the description of a hardware processor with a plurality of processing cores in the ’034 patent. See, e.g., Ex. 1001, 5:11–37, 7:14–36, 9:50–10:3.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artInstituted
“Motivation to Combine and Analogous Art The Petition offers several motivations to combine Menon, Trefethen, RS6000, and POEref in the manner claimed in the ’034 patent with a reasonable expectation of success, which we find sufficient on the present record. The Petition first asserts that Menon and Trefethen are analogous prior art because they pertain to the same “field of cluster computing” as the ’034 patent and “are reasonably pertinent to the problem of the ’034 patent, namely, executing a single program on multiple nodes.” Pet. 22 (citing Ex.1001, 1:14–15; Ex.1003, ¶¶ 65–69; Ex. 1005, 2; Ex. 1006, Abstract). The Petition points out that Menon expressly cites and builds on the MultiMATLAB system taught by Trefethen. Id. (citing Ex. 1003 ¶ 71; Ex. 1005, 1–2). The Petition also contends that: Accordingly, Menon and Trefethen together represent a combination of prior art elements according to known methods (executing MATLAB code on a multiprocessor system) to yield the predictable result discussed in both papers: the MultiMATLAB system executing MATLAB in parallel to perform mathematical calculations. Id. at 22–23 (citing Ex. 1003 ¶ 70; Ex.1005, Abstract; Ex. 1006, 2–7). The Petition further contends that a POSITA would have found it predictable to combine Trefethen with Menon with a reasonable expectation of success” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,570,034 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - PTAB · May 21, 2025 · IPR2025-00038 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–7, 10–13, 16, 17, 19, and 20 on all petitioned grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We do not adopt Patent Owner’s proposed construction. The disputed claim language merely requires that the display on the first or second screen is different in each image capture mode. Consistent with the claim language, the ’842 Patent discloses numerous examples of image capture modes in which a display on the first or second screen is different. See e.g., Ex. 1001, Figs. 12, 14A–14B, 15A–B, 16A–B, 20. Patent Owner’s construction is narrower than the claim language and incorrectly adds a requirement for a different display on the first screen between image capture modes or a different display on the second screen between image capture modes. See also Prelim. Resp. 16–17 (arguing that the claim requires the same screen to present different displays in different image capture modes). Patent Owner’s citations to the ’842 Patent are directed to an embodiment disclosing a preview image 1108 on first display 1200 that is in the portrait orientation in Figure 12 that, upon rotation of device 100, changes to preview image 1108 in landscape orientation 2004. See Ex. 1001, 35:65–36:2, 36:32–37:6; Figs. 12, 20, 21. Although claims are interpreted in light of the specification, it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.3d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. As demonstrated in the analysis below, at this stage of the proceeding, we need not explicitly construe “screen,” display,” “wherein in each image capture mode a display on the first or second screen is different,” or any other claim term or phrase. See, e.g., Realtime, 912 F.3d at 1375.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Because Chin specifies that the preview is shown on one screen or the other, and not on both screens in both modes, it is at least suggested and would have been obvious to a POSITA that the display on each of the screens changes between modes. Indeed, a POSITA would have understood that the screen not described as showing the preview would either be on or off. . . . And a POSITA would have been motivated to turn off (disable) that other screen, as the screen would not be facing the user and doing so would save power and avoid inadvertent inputs on the other touch screen during the image capture process. . . . Turning off power to one screen in a multi-screen device was a known design option and well within the ability of a POSITA. Pet. 55 (citing Ex. 1003 ¶¶ 257, 258).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,836,842 - PTAB · May 21, 2025 · IPR2025-00041 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1, 3–7, 9–10, 17–18, and 20 on all grounds, finding a reasonable likelihood that Yook anticipates at least claims 1 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. Based on the preliminary record, we adopt Petitioner’s as yet undisputed level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that construction of claim terms is not necessary to determine whether to institute inter partes review. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are invited to address any claim construction issues bearing on this inter partes review following institution.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991). We assess Petitioner’s evidence and argument according to the above- referenced anticipation standard. For the reasons given below, we determine the Petition satisfies the reasonable likelihood of prevailing standard under 35 U.S.C. § 314(a). We begin with a discussion of Yook.” slip op. at 11
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,058,153 - PTAB · May 21, 2025 · IPR2025-00040 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1–9 on all grounds, finding a reasonable likelihood that Yook anticipates at least claims 1 and 7 and Purcell anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991).” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We apply a two-part test when evaluating whether to exercise discretion under § 325(d). See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Specifically, we consider: (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. Id. In doing so, we consider the factors discussed in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.; informative) (“Becton, Dickinson”). Id. at 9– 11.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. Based on the preliminary record, we adopt Petitioner’s as yet undisputed level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,134,756 - PTAB · May 21, 2025 · IPR2025-00060 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1 and 12 are anticipated by Ogawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner notes that it “applies [Petitioner’s] definition of a POSITA for the purposes of th[e] preliminary response but expressly reserves the right to urge a different definition of a POSITA and support such definition with evidence including expert testimony.” Prelim. Resp. 6. For the purposes of this Decision, we apply Petitioner’s currently uncontested definition because it appears consistent with the problems addressed in the ’080 patent and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits that “the Board need not construe any terms of the challenged claims to resolve the underlying controversy.” Pet. 9. Petitioner however notes the multiple “displays” recited in, e.g., independent claim 12 and dependent claims 2 and 4, and submits that Patent Owner’s infringement contentions “suggest that the ‘first display’ and ‘second display’ in claim 12 read on a single physical display divided into two or more logical displays.” Pet. 9–10 (citing Ex. 1015, 33–34). Petitioner submits that (i) the presented grounds 1 and 2 cover the respective claims under Patent Owner’s interpretation of “display” which Petitioner alleges to encompass the claimed “first display” and “second display” being logically divided displays of a single physical display, (ii) grounds 3 and 4 cover the respective claims under a narrower interpretation of “display” under which the claimed “first display” and “second display” are physically distinct from each other,7 and (iii) ground 3 also covers the respective claims under Patent Owner’s interpretation of “display.” In response, Patent Owner submits that for the purposes of the Preliminary Response, its arguments “do not turn on any specific construction of ‘display’ and the Board need not address the construction of this term for institution.” Prelim. Resp. 5. Based on the record at this stage of the proceeding, we need not construe “display” or any other claim term to resolve the controversy before us. 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner begins its argument with the premise that “Ogawa’s teaching of an active screen indicator cannot suggest the claimed open application state indicator.” Prelim. Resp. 8. We note that Patent Owner does not direct us to any portion of the Specification or prosecution history of the ’080 patent describing the recited “open application state” nor does Patent Owner propose a construction of this term. See generally Prelim. Resp. Our review of the Specification and prosecution history does not reveal any explicit description of “open application state.” Consequently, we give this term its plain and ordinary meaning that an application screen is open in the display.” slip op. at 18
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 8,842,080 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01026 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 5–8 and 16–19 on all petition 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
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’304 patent. Accordingly, we institute an inter partes review of claims 5–8 and 16–19 of the ’304 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 5[a] receiving, at a second conditional access client of the second conditional access server, an authentication through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses the second root of trust for the second security domain which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’304 patent.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,667,304
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.