- Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. 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). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [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) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’403 patent and the asserted prior art. 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). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,294,403 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00651 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6, 7, and 9–20 were unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [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) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’680 patent and the asserted prior art. 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). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“target value” is part of a command that is sent from a computing device to a server and then to a controller. The controller then receives a measurement of the fluid by a sensor and determines whether the measurement satisfies the “target value.” If the measurement does not satisfy the “target value,” further operations are undertaken. The recited operation sequence makes clear that the plain and ordinary meaning of “target value” is not as Dr. Wooley opines because the particular operating condition that a device is in at a particular time is represented by the measurement taken by the sensor, 11 Some claim language less relevant to construing “target value” was omitted for ease of reference. which the controller then uses to determine whether the measurement satisfies the “target value.” Additionally, claim 1 recites that the “target value” is sent as part of a command to the controller. The “target value” is not sent to the controller from the sensor, as might be expected if the plain and ordinary meaning of “target value” were as Dr. Wooley opines. Petitioner and Dr. Wooley’s construction would also result in “target value” meaning effectively the same thing as the measurement of the fluid by the sensor, a concept that is separately recited in claim 1 and to which the “target value” is compared. The Specification of the ’680 patent does not support Petitioner’s understanding of the plain and ordinary meaning of “target value.” Although the Specification does not recite “target value,” it recites “target state,” and describes “target state” sufficiently to understand the plain and ordinary meaning of “target” as used in “target value” and “target state.” In particular, the ’680 patent explains that “[i]n some embodiments, the process 104 includes receiving, via a network interface, from a remote user device, (e.g., via a command-center server) a command to change a state of a fluid-handling device to a target state.” Ex. 1001, 11:48–51. This portion reflects that the command is seeking to change a state of a fluid-handling device to a target state. In other words, the “target value” or “target state” is not generally “the particular operating condition that a device is in at a particular time”; rather, it is a value or state that the fluid-handling device is desired to be in, as Patent Owner and Dr. Durham explain. Additionally, just as claim 1 recites a directional component for the “target value” to be sent to the controller in a command, so too does the Specification describe a “target state” as being sent in a command from a remote user device. Thus, the Specification clearly supports the plain and ordinary meaning proposed by Patent Owner and Dr. Durham and not the plain and ordinary meaning proposed by Petitioner and Dr. Wooley. slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“time-stamped process data, report exception therein to the remote host, and extract and transmit time-stamped process data to the remote host.” Ex. 1005, Abst. (emphases added). Almadi explains that its remote field systems must include a plurality of controller units “to issue commands to, and gather and process data from a plurality of field devices, including remote systems and instruments, . . . [and] a database server for the storage of process data retrieved from the remote subsystems and instruments.” Id. at 2:22–30 (emphases added). Based on these disclosures, we agree with Patent Owner that Petitioner has not established that Almadi discloses element [1.4]. Specifically, the teachings from Almadi identified by Petitioner refer to process data, which is data retrieved from the remote subsystems/field devices. Thus, we understand that Almadi’s teaching—of using an Ethernet switch to transmit “process data”—describes transmitting data from the remote subsystems/field devices. See Ex. 1005, 3:13–17, cited in Pet. 15. But claim 1 and particularly element [1.4], recites “sending, with the server, the target value to the network address [which identifies a controller of the fluid-handling device13] via the network,” which is different than sending process data from the field devices to the remote host or database server for storage.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,680 - Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - PTAB · Oct 8, 2024 · IPR2024-00432 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Comcast would show at least one claim unpatentable over Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 12
- Parallel petitionsDenied
“petitions, Petitioner filed a Petition Ranking and Explanation of Material Differences Between Petitions, ranking its three petitions directed to the ’362 patent in accordance with the guidance with respect to parallel petitions in the Board’s November 2019 Consolidated Trial Practice Guide. Paper 3; see Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019, “CTPG”), at 59–60 (available at Available at https://www.uspto.gov/ TrialPracticeGuideConsolidated). In that Paper, Petitioner ranked the instant Petition first. Paper 3, 1.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA” or “skilled artisan”) “would have had a degree in electrical engineering or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for 8 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. formal education.” Pet. 20 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner states that “[a]ll claim terms herein should be given their” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,210,362 - PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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 that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(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 discussed below, we determine, based on the record before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - PTAB · Mar 26, 2024 · IPR2024-00008 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–5, 7–14, and 16 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). Upon considering the Petition and the Preliminary Response, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–5, 7–14, and 16 of the ’121 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Section 325(d) requires us to “take into account whether, and reject the petition . . . because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (setting forth six factors the Board may weigh in evaluating whether to exercise discretion under § 325(d)). The Board applies the following two-part framework in evaluating a request for discretionary denial under this section: (1) whether the same or substantially the same art or arguments were previously presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’121 patent: [A] POSA as of November 12, 2010, would have had at least a bachelor’s degree in mechanical or agricultural engineering and 2–4 years experience in the design or manufacture of agriculture equipment. A POSA would have been familiar with the design and operation of known seed distribution meters and with the use of bearings and other plate-like technologies to receive and distribute axial loads by providing bearing surfaces for the transfer of forces. Pet. 21 (citations omitted). Patent Owner “defers its position on this issue until such time as the Board decides to institute a trial.” Prelim. Resp. 28–29. At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,770,121
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.