- PTAB · Nov 21, 2025 · IPR2025-00956 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–12 under all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We institute an inter partes review only if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the existing record, we conclude that Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’992 patent is unpatentable under the presented grounds. See Pet. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“These two proposed definitions of the ordinarily skilled artisan share many consistencies, for example, the types of degrees and experience such a person would have had, but differ in the number of years of experience. Petitioner proposes the ordinarily skilled artisan would have had at least five years of experience and Patent Owner proposes at least three years (which would necessarily include five years, too). Patent Owner also proposes that the ordinarily skilled artisan would have consulted a dentist, oral surgeon, prosthodontist, or periodontist with experience in dental implants and prosthetics. At this point, we find little meaningful difference between the two proposed definitions. In fact, neither does Patent Owner’s witness, Mr. Leinsing, who states that his “opinions would not change under either definition.” Ex. 2011 ¶ 40. Thus, at this stage, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, which, unlike Patent Owner’s, does not implicate reliance on the knowledge of people other than the individual ordinarily skilled artisan. Petitioner’s definition appears to comport with the level of skill in the art reflected in the prior art of record and the ’992 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). This parties may further developed this issue at trial, if desired. C.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board interprets claim terms in an inter partes review using the same claim construction standard that is used to construe patent claims in a civil action in federal district court. 37 C.F.R. § 42.100(b). In construing claims, district courts and the Board here, by default, give claim terms their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Here, the first claim limitation at issue is broad, i.e., different thread pattern/profile between a definite and a temporary screw, and the Specification’s and priority applications’ disclosure is narrow and specific, asymmetric buttress style threads in a temporary screw and symmetrical threads in a definite screw (are different). Any apparent predictability in or maturity of the relevant field here must be contrasted with the fact that the Specification, considering the ’992 patent itself or any of the identified priority applications, never once even discusses the (claimed) concept of specifically differing the thread style between a temporary and a definitive screw. Any differences in thread style are not called out by the disclosure, but are described and can be discerned only in relation to the respective threads’ functionality, i.e., Fig. 75’s temporary screw 190 has buttress-style threading so it can be pulled out rather than unscrewed from the abutment; Fig. 9’s definitive screw 75 has male threads that fill the female threads of the abutment 8 for a secure permanent engagement. Ex. 1001, 15:23–30, 21:25–44, 23:3–36; Ex. 1012, 97–98, Figs. 9, 75. And, although it is possible for a single disclosed species to provide written description support for a claimed genus, “a sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350; see also Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). That does not appear to be the case here—the present record does not support that the described asymmetrical buttress, serrated style of different temporary screw threading (relative to that of the definitive screw and regardless of the direction of the threads for rotation) is sufficiently representative of the genus’s “different” thread patterns/profiles. See, e.g., Ex. 1006 (a buttress style thread does not function the same as a buttress reverse or 75º joint profile or rounded, or trapezoidal thread).” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 11,937,992 - Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentablePTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision
Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79
- BurdenNot shown unpatentable
“Anticipation is not an ipsissimis verbis test, but “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65
Patent outcomesUS 9,171,268 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented 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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · Sep 9, 2025 · PGR2025-00023 · APJ Michael J Fitzpatrick · PGR · Institution
Instituted PGR on claims 1–9 because the Board found it more likely than not that at least one challenged claim is unpatentable over the ’629 publication.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review requires that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or that “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C. § 324(a)–(b). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Accordingly, we grant the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends a person of ordinary skill in the art (“POSITA”) would have a Ph.D. degree in biological, chemical or biochemical engineering, molecular biology, or biochemistry and at least two years of experience in the field of utilizing or assessing horseshoe crab zymogen proteins (lysate, purified native and/or recombinantly produced) for endotoxin detection and quantitation. More education could substitute for experience to a certain extent, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶48–49). Patent Owner does not dispute Petitioner’s description of a POSITA in its Preliminary Response. Prelim. Resp. 10. 1 In addition to other changes to Title 35, the AIA introduced amendments to 35 U.S.C. § 102. Because Patent Owner concedes that the ’725 application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013” (Ex. 1022), the AIA version of § 102 applies to the ’109 patent. AIA § 3(n)(1)(B); Ex. 1001, 1:11–14 (claiming priority to the ’725 application). 2 US 2019/0241629 A1, published August 8, 2019 (“the ’629 publication” (Ex. 1015)). At this stage, we find Petitioner’s description of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction of any claim term. See Pet. 22–23; Prelim. Resp. 10. We determine that no express claim construction is necessary based on the present record.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“To show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23– 24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in which a POSA would have understood the prior art, or what a POSA would have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description.” slip op. at 12
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,959,109 - PTAB · Sep 9, 2025 · IPR2025-00440 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR of claim 21 on both asserted § 103 grounds, finding a reasonable likelihood that claim 21 is obvious over Mizumura with the ’498 PCT and over Mizumura with McClymont.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 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 discussed below, we determine Petitioner has demonstrated a reasonable likelihood that the challenged claim of the ’318 patent is unpatentable. Accordingly, we institute an inter partes review of the challenged claim on each of the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Nevertheless, we determine that the contrary evidence Petitioner has cited suffices to establish a reasonable likelihood of success at this preliminary stage of the proceeding. In this regard, we also note Dr. Jain’s testimony — currently unrebutted — that an ordinarily skilled artisan would have known, based on Tokunaga’s sequence comparisons of Factor C proteins, that “certain sequence differences between [Limulus polyphemus] and Tachypleus tridentatus were non-conservative (i.e., potentially giving rise to changes in function in terms of enzymatic activity of Factor C).” Ex. 1002 ¶ 94 (citing Ex. 1022, 157). We likewise note Dr. Jain’s testimony that such artisan would have recognized Tokunaga’s conclusion, regarding “immunological and biochemical properties” of Factor C proteins of the two different horseshoe crab species, to be “based on only gross biophysical-biochemical properties” that are not “granular enough” to predict functional properties such as residual activity in presence of specific ions. Ex. 1002 ¶ 100.” slip op. at 22
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledOther
“submitted in a different proceeding and in a different forum, and our rules contemplate objections to admissibility only after institution. See 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”); also compare Fed. R. Evid. 801(c) (defining hearsay as a statement, not made at the current trial or hearing, “offer[ed] in evidence to prove the truth of the matter asserted”), with Fed. R. Evid. 801(d)(2) (excluding from hearsay statement offered against an opposing party where statement was made by “a person whom the party authorized to make a statement on the subject” or by a “party’s agent or employee on a matter within the scope of that relationship and while it existed”). Nevertheless, as discussed above, Petitioner has provided contrary evidence, including statements from Patent Owner’s patent application, suggesting that, “due to the various differences and diversity of biomolecules depending on the genus and species of the horseshoe crab,” it had not been possible “to accurately determine the full-length sequence structure, expression, and function of [Limulus] proteins and genes using conventional methods” more than 20 years after complete gene and amino sequences from two Tachypleus horseshoe crab species had been reported. Pet. 35 (citing, e.g., Ex. 1005 ¶¶ 12–17). Thus, even if we were to take the Frohman Declaration into account, we find that Petitioner has established a reasonable likelihood 28 of success that the ’767 application disclosures did not enable an ordinarily skilled artisan to make and use the invention of the challenged claim without undue experimentation. Furthermore, assuming that the disclosures in ’767 application would have enabled an ordinarily skilled artisan to express recombinant Limulus polyphemus Factor C protein in HEK293, we find Petitioner has established, sufficient for purposes of institution, that the disclosures do not enable an ordinarily skilled artisan to make such a protein exhibiting the “full scope” of the claimed residual activity, without undue experimentation. Patent Owner cites to disclosures in the ’767 application that (1) describe how to produce recombinant Factor C in HEK293 cells and measure residual activity, (2) suggest “Factor C expressed in mammalian cells can have low susceptibility to activity inhibition by ions,” and (3) provide examples where residual activity met the required minimum. Prelim. Resp. 26–27, 32–34. Nevertheless, whether an ordinarily skilled artisan would have been able to make, based on these disclosures and without undue experimentation, a recombinant Factor C protein having residual activity encompassed by claim 21 but higher — even significantly higher — than that achieved in the example, is a fact intensive issue that would benefit from further development during trial.15 See, e.g., In re” slip op. at 28
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’767 application does not provide adequate written description support for claim 21 of the ’318 patent and that, accordingly, Mizumura, the ’498 PCT, and McClymont qualify as prior art to the challenged claim.” slip op. at 19
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,236,318 - 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 · Mar 6, 2025 · IPR2024-01222 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 over all petitioned grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“has not requested a stay and there is no evidence the district court would likely grant one. Prelim. Resp. 64. We decline to speculate about how the District Court might rule on a motion that has not been filed. On this record, the first factor is neutral.” slip op. at 6
- Parallel petitionsDecided for petitioner
“of two petitions challenging the same claims of the ’389 patent. See Paper 7, 2. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Here, there is such a dispute because even though the ’389 patent was filed on May 2, 2002 and does not claim priority to any earlier application, as noted above, Patent Owner contends that some of the challenged claims are entitled to an earlier priority date. See Prelim. Resp. 6–14. Given this apparent priority dispute, we agree with Petitioner that two petitions—one asserting prior art that is vulnerable to the priority dispute and one asserting art that is not—are justified. See Paper 3, 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “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 reason below, we conclude there is a reasonable likelihood that Petitioner would prevail in demonstrating at least one of the challenged claims is unpatentable. Pursuant to § 314, we hereby institute an inter partes review to the challenged claims of the ’389 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 10 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 18–19. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Feb 25, 2025 · IPR2024-01294 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted IPR on claims 1, 12, 25, and 26 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Zwinkels.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion Regarding Claim 1 Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 as unpatentable under 35 U.S.C. § 102 as anticipated by Zwinkels. D. Remaining Claims of Ground 1 and Grounds 2 and 3 The threshold for institution is a reasonable likelihood of Petitioner prevailing as to any single claim. 35 U.S.C. § 314(a). “Once that single claim threshold is satisfied, it doesn’t matter whether the [P]etitioner is likely to prevail on any additional claims.” SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). Thus, because we have decided to grant review of claim 1, we do the same for all claims challenged and all grounds raised. Id.; see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in establishing that at least one of the challenged claims is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is granted and inter partes review is hereby instituted as to claims 1, 12, 25, and 26 of U.S. Patent No. 10,434,394 B2 on the grounds presented; and” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“to move forwardly and rearwardly relative to the frame. Pet. 33–38. For example, paragraph 20, as cited by Petitioner, discloses that the rollers “are movably suspended in the frame in vertical direction, wherein the suspension of said roll or rollers is arranged to convert relative horizontal movements of the roll or rollers into vertical movements thereby compensating and/or attenuating said horizontal movements by gravity.” Ex. 1004 ¶20 (cited at Pet. 34). Further, Zwinkels attributes the forward and rearward movement to the use of the bicycle by the person exercising on it. See Ex. 1004 ¶27 (describing the “horizontal movements induced by the accelerations and decelerations of the training cyclist”) (cited at Pet. 35). Petitioner also cites multiple figures that illustrate forward and rearward movement. Pet. 35–37 (reproducing Ex. 1004, Figs. 3, 5, and 6). There is a reasonable likelihood Zwinkels teaches “wherein the movable interconnection of the upper member with the lower member is configured to enable the upper member to move forwardly and rearwardly in the fore-aft direction relative to the lower member in response to fore-aft forces that are transferred to the upper member from the item of exercise equipment in response to use of the item of exercise equipment,” as recited in claim 1. e) “wherein the movable interconnection of the upper member with the lower member is further configured to provide upward and downward movement of the upper member relative to the support surface during movement of the upper member forwardly and rearwardly in the fore-aft direction relative to the lower member.” Petitioner argues that Zwinkels’s pendulum arms 6 enable the rollers to move upward and downward relative to the frame while the rollers are also moving forwardly and rearwardly relative to the frame. Pet. 39–42. For example, paragraph 24, as cited by Petitioner, discloses that the pendulum arms connecting the rollers at fixed pivoting points on the frame “provides an easy and effective solution for absorbing and attenuating horizontal movements by converting these horizontal movements to vertical movements.” Ex. 1004 ¶24 (cited at Pet. 39). Petitioner also reproduces Figures 5 and 6, which illustrate the displacement of rollers in both the vertical and horizontal directions. Pet. 40 (citing Ex. 1004, Figs. 5–6). Figure 5 is reproduced below. Figure 5, reproduced above, “shows the embodiment in which there are two rollers 4 for the bicycle back wheel.” Ex. 1004 ¶34. Figure 5 shows two configurations of the embodiment on left and right sides. Ex. 1004 ¶34, Fig. 5. The configuration “at the left of FIG. 5 shows the pendulum arms 6 in a resting position, whereas the [configuration] on the right shows the pendulum arms 6 after they have due to the connecting link 7 concertedly moved to the right due to a force FH, causing that the rollers 4 have moved vertically upwards.” Ex. 1004 ¶34. There is a reasonable likelihood Zwinkels teaches “wherein the movable interconnection of the upper member with the lower member is further configured to provide upward and downward movement of the upper member relative to the support surface during movement of the upper member forwardly and rearwardly in the fore-aft direction relative to the lower member,” as recited in claim 1. f) “wherein the upper member is oriented parallel to the support surface plane during movement of the upper member relative to the lower member in the fore-aft direction and during upward and downward movement of the upper member relative to the support surface” Petitioner argues that Zwinkels’s rollers are oriented parallel to the ground or floor at all times. Pet. 42–44. Petitioner argues that this is clearly shown in Figure 5, which we reproduced in the immediate section above. See Pet. 43 (citing and annotating Ex. 1004, Fig. 5). We agree. There is a reasonable likelihood Zwinkels teaches “wherein the upper member is oriented parallel to the support surface plane during movement of the upper member relative to the lower member in the fore-aft direction and during upward and downward movement of the upper member relative to the support surface,” as recited in claim 1. 3. Conclusion Regarding Claim 1 Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 as unpatentable under 35 U.S.C. § 102 as anticipated by Zwinkels.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“1. Zwinkels (Ex. 1004) Zwinkels was filed November 4, 2010, and published June 9, 2011. Ex. 1004, codes (22), (43). Petitioner argues that, based on its filing date, “Zwinkels is thus prior art under at least 35 U.S.C. § 102(a)(2).” Pet. 15. On the record presented, we agree. In addition, the current record supports that, based on its publication date, Zwinkels is prior art also under 35 U.S.C. § 102(a)(1).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an express construction of any term of claim 1. See Pet. 14 (“Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.”). At this stage of the proceeding, we discern no need to provide an express construction of any term of any claim.” slip op. at 8
Claim construction§ 102 anticipationPatents in suitUS 10,434,394
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.