- PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - PTAB · May 15, 2025 · IPR2025-00001 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that the claims are obvious over Hazelzet and Buchmann and over Hazelzet, Buchmann, and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework when determining whether to exercise its discretion under 35 U.S.C. § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 12
- BurdenInstitutedInstituted
“each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). An obviousness determination based on a combination of references requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation.’” “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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combination of prior art. B. Level of Ordinary Skill in the Art” slip op. at 25
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“It is well established that collateral estoppel applies to IPR proceedings.” Google LLC v. Hammond Dev. Int’l, 54 F.4th 1377, 1381 (Fed. Cir. 2022). Collateral estoppel, i.e., issue preclusion, applies when “(1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party.” VirnetX Inc. v. Apple Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (quoting Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). This preclusive effect also applies to “related claims that present identical issues of patentability.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1377 (Fed. Cir. 2018); Google, 54 F.4th at 1381 (“[C]ollateral estoppel may apply even if the patent claims use slightly different language to describe substantially the same invention.”) (internal quotation marks omitted); Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (“Our precedent does not limit collateral estoppel to patent claims that are identical.”). slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had a Bachelor’s degree in computer engineering, or a related field, and several years of additional experience working with computer memory systems. She would have been familiar with computer memory systems and basic CPU architecture documented in the literature, including standards, and generally available in commercial systems, including how computer components access a computer’s memory, the role of a memory controller, the basic operation of memory modules and devices, and the techniques used to couple memory devices to the other components of the computer system. Pet. 13 (citing Ex. 1003 ¶ 55; Ex. 1102, 11–12; Ex. 1103, 11–12; Ex. 1034, 8–9). Patent Owner “applies Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 4. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,386,024 - K/S Himpp v. Bragi GmbHAll claims unpatentablePTAB · Nov 4, 2024 · IPR2023-00901 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–16 are unpatentable under § 103 over the Hensen-based combinations, including combinations with the LG Manual or Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals are very similar, and we find Petitioner’s proposal to be consistent with the level of ordinary skill in the art that is reflected by the ’385 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In addition, Petitioner filed the Declaration of Brian W. Anthony, Ph.D. and the Reply Declaration of Brian W. Anthony, Ph.D. in support of its Petition.8 Ex. 1002 (“Anthony Decl.”); Ex. 1033 (“Anthony Reply Decl.”).” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“This Manual has been designated guidance document USPTO- P-1. The contents of this document do not have the force and effect of law and are not meant to bind the public in any way. This document is intended only to provide clarity to the public regarding existing requirements under the law or agency policies. However, given that, to our knowledge, there is no pertinent case law on this issue, we find the PTO guidance to be a persuasive interpretation of the statute. See Tr. 34:2–12, 48:1–4. Thus, we follow the PTO guidance, which explicitly requires that the exceptions of 35 U.S.C. 102(b)(1)(B) are only applicable when the subject matter” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Other than disputing the prior art status of the Hensen Video, which as discussed above is unfounded, Patent Owner does not specifically challenge the motivation for combining the Hensen Patent and the Hensen Video. See generally PO Resp. We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinning for the proffered combination, and has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine the Hensen Patent and the Hensen Video as argued.” slip op. at 24
Patent outcomesUS 10,635,385 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,635,385 - Google LLC v. Valtrus Innovations LimitedAll claims unpatentablePTAB · Apr 3, 2024 · IPR2022-01406 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–20 are unpatentable under §103 over McCarthy and Gien; claims 1, 6, and 8 are also anticipated by McCarthy.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“virtual machines” is not a definition of the term, but rather describes how a virtual machine is created. The sentence following the reference to creating virtual resources as “software constructs,” on which Patent Owner relies, states, “[t]he virtual resources are then assigned to virtual machines used for respective servers.” Ex. 1001, 13:46–48 (emphasis added). Thus “virtualization” refers to creating virtual machines by assigning virtual resources as software constructs, but the nature and scope of what constitutes a “virtual machine” is unresolved by Patent Owner’s proposed construction. See Reply 5. In any event, like Petitioner, Patent Owner ultimately argues that it is unnecessary to pin down the outer bounds of the construction of “virtual machine,” because, according to Patent Owner, McCarthy discloses virtual machines under any of the constructions that have been considered here. Sur-Reply 17–20.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For this Decision, we apply Petitioner’s articulation.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit the testimony of Petitioner’s expert Dr. Madisetti, which provides adequate support for Petitioner’s asserted combination. Moreover, Petitioner’s obviousness analysis is supported by the undisputed fact that virtual machines and their advantages were well known at the time of the McCarthy application, and by the prosecution history of the ’005 patent, during which, as discussed above in Section III.D.2.a), the Examiner cited references disclosing virtual machines in finding the then-pending claims obvious. Ex. 1002, 47–59. Applicants overcame that rejection by amending the claims to add the requirement that the second manager process maintain a list of priority levels and quantity of needed resources (a requirement now satisfied by McCarthy). Id. at 113–115, 181–192. But the basic finding of the Examiner that virtual machines were a well-known and obvious technique at the time of the ’005 invention supports Petitioner’s challenge. Accordingly, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of McCarthy and Gien, and the preponderance of the evidence establishes that a person of ordinary skill would have been motivated to make that combination.” slip op. at 69
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“A sufficient written 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; D Three Enterprises, 890 F.3d at 1048–50; Idenix v. Gilead Sciences, 941 F.3d 1149, 1164 (Fed. Cir. 2019); ICU Medical v. Alaris, 558 F.3d 1368, 1377 (Fed. Cir. 2009); Rivera, 857 F.3d at 1319–21; LizardTech v. Earth Res. Mapping, 424 F.3d 1336, 1346 (Fed. Cir. 2005); Smith & Nephew v. Arthrex, IPR2017-00275, Paper 36, 27–28 (May 2, 2018). Because we have determined that the physical partition embodiment of McCarthy is not a disclosure of virtual machines, a virtualization software layer (or software virtualization layer), or a host operating system, McCarthy does not support the computing domains genus of the ’005 claims. Even if we were to agree that the disclosure in McCarthy of virtual partitions were a disclosure of a type of virtual machine (we do not), we would nevertheless determine that the full scope of the computing domains requirement was not met. The virtual machine embodiment claimed in the ’005 patent describes the distinctive features of the virtual machine embodiment, not present in the physical partition embodiment: Virtualization software typically executes in connection with a host operating system of the physical server. The virtualization software creates virtual resources as software constructs. The virtual resources are then assigned to virtual machines. Specifically, the virtual resources are used to execute “guest” operating systems that execute on top of the host operating system. . . . . [V]irtualization refers to the creation of virtual machines that coexist on one or several physical servers. Virtualization software typically executes in connection with a host operating system of the physical server. The virtualization software creates virtual resources as software constructs. The virtual resources are then assigned to virtual machines used for respective servers. Specifically, the virtual resources are used to execute “guest” operating systems that execute on top of the host operating system. The guest operating systems are then used to execute applications. Ex. 1001, 1:39–45, 13:43–51. This arrangement of “guest” operating systems operating “on top of the host operating system” using “virtualization software” is not present in the physical partition embodiment of the ’005 patent or McCarthy.17 Therefore, McCarthy neither discloses a representative number of species falling within the scope of the computing domains genus, nor structural features common to the members of the computing domains genus so that one of skill in the art can “visualize or recognize” the members of the genus. d) Summary Accordingly, having considered the entire record and weighed the entirety of the evidence, we determine that Petitioner has proved by a preponderance of the evidence that McCarthy is prior art to the ’005 patent claims.18” slip op. at 60
Patent outcomesUS 7,748,005 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,748,005 - PTAB · Feb 29, 2024 · IPR2023-01291 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds, finding a reasonable likelihood that Meta would prevail on the petition’s obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 4–5 (citing Anderson Decl. ¶ 31). Patent Owner does not dispute Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 11–12. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Andrea, Hussain, and Holzrichter. The Holzrichter system uses both EM and acoustic sensors to detect both voiced and unvoiced speech in order to accurately perform its speech recognition process, determining “onset of speech, rejection of external noise, vocalized pitch periods, articulator conditions, accurate timing, the identification of the speaker, acoustic speech unit recognition, and organ mechanical parameters.” Ex. 1007, Abstract. Voiced speech occurs when the vocal cords are vibrating, and unvoiced speech occurs when the vocal cords are not vibrating.4 Id. at 22:24–26. Holzrichter explains, and provides examples underscoring, the importance of detecting both voiced and unvoiced speech in a speech recognition application. E.g., id. at Figs. 9A–B, 25A–H, 13:19–27, 22:15–29, 31:51–57, 45:2–7. The record does not support, however, Patent Owner’s attorney argument that one of ordinary skill would accord the same importance to detecting both voiced and unvoiced speech in a noise cancellation application such as is disclosed in the ’543 patent, Andrea and Hussain. “Speech recognition systems . . . are known to experience problems due to levels of background noise that are in fact, considered quite acceptable to human listeners.” Ex. 1006, 10. Andrea does not distinguish between voiced and unvoiced speech. See generally Ex. 1005. Hussain simply assumes that “an effective voice activity detector (VAD) is available.” Ex. 1006, 11. The ’543 patent indicates that the degree of precision in” slip op. at 18
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,467,543 - Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentablePTAB · Jan 3, 2024 · IPR2022-01156 · APJ John D Hamann · IPR · Final written decision
Claims 1–4, 6–16, 18–24, 28, and 29 are unpatentable as anticipated by Chen-069, which is prior art because the 2012 application lacks written-description support for their full scope.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the time of the invention of the ’948 patent would have had “(i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent education or training, as well as (ii) approximately three years of experience in designing multi-lens optical systems.” Id. at 12 (quoting Pet. 13–14 (citing Ex. 1003 ¶ 28)). We also found that “[l]ack of work experience could have been offset by additional education, and vice versa,” and that one of ordinary skill in the art “would have understood the fundamentals of optical aberration theory, and understood and used standard techniques for making lenses cheaper and more effective, especially for lens systems used in mobile devices.” Id. (quoting Pet. 14; Ex. 1003 ¶¶ 28, 30). We also agreed with Petitioner and found that one of ordinary skill in the art “would have known how to use lens design software such as Code V, Oslo, and ZEMAX, and would have taken a lens design course or had equivalent training.” Id. (quoting Pet. 14; Ex. 1003 ¶ 29). We also agreed with Petitioner and found that one of ordinary skill in the art “would have regularly used such software to create new lens designs, often using pre-existing lens designs as a starting point and then performing routine optimizations to reach a desired design.” Id. at 12–13 (quoting Pet. 14; Ex. 1003 ¶ 29). Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’948 patent or identify any shortcoming in Petitioner’s formulation. See PO Resp. 16–17. Because Petitioner’s definition of the level of skill in the art is consistent with the ’948 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner argues that construing the challenged “claims to include first and second lens elements having the same refractive power . . . is improper.” PO Resp. 21. According to Patent Owner, one of ordinary skill in the art “would construe the [’]948 [p]atent claims to include first and second lens elements in the form of a ‘doublet,’ which requires the respective lens elements to have opposite refractive power, and thus includes only configurations” of “positive-negative” and “negative-positive” for the first and second lens elements, respectively. Id. at 20–21. In other words, “[t]he proper construction of the ’948 [p]atent claims is that the first and second lens elements may have positive-negative or negative-po[sitive] refractive powers, but would not include first and second lens elements having the same refractive polarity,” according to Patent Owner. Id. at 26. Thus, the parties agree that the challenged claims should be construed to encompass at least a lens system having a first lens element with a negative refractive power and a second lens element with a positive refractive power. See, e.g., Pet. 33; PO Resp. 21. We conclude that such a lens system is consistent with the plain language of the challenged claims. See, e.g., Ex. 1001, 12:8–26, 13:14–38, 14:16–46 (reciting first and second lens elements without reciting a specific refractive power polarity for the independent claims). And we determine that no claim terms require further construction in light of our findings below. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“In sum, we determine that the 2012 application does not provide written description support for an imaging lens system with a negative refractive power first lens and a positive refractive power second lens. And the agreed scope of the challenged claims includes such a configuration, and thus, the written description of the 2012 application does not support the full breadth of the challenged claims. We therefore determine that the challenged claims of the ʼ948 patent do not benefit from the priority date of the 2012 application. Therefore, we determine that Chen-069 is prior art to the challenged claims of the ʼ948 patent.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner (see generally PO Resp.), we determine that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claim 1. D. Remaining Challenged Claims Petitioner argues that Chen-069 discloses the limitations recited in claims 2–4, 6–16, 18–24, 28, and 29. Pet. 48–65. Patent Owner does not address Petitioner’s arguments directed to these claims. See generally PO Resp. 32–34. Based on the evidence and arguments of record, we find that Petitioner demonstrates by a preponderance of the evidence that Chen-069 anticipates claims 2–4, 6–16, 18–24, 28, and 29.” slip op. at 24
Patent outcomesUS 9,784,948 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites Phillips · GrahamPatents in suitUS 9,784,948 - PTAB · Dec 7, 2023 · IPR2023-00997 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claim 2 under § 103 over TS 36.300 V10.0.0 and R2-104515, § 102 over Malladi, and § 103 over Malladi and TS 25.319.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claim 2 of the ’976 patent. Accordingly, we institute an inter partes review as to claim 2 of the ’976 patent on the three asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for patent owner
“Patent Owner asserts that no construction is needed for that phrase, pointing to the District Court’s Markman construction. Prelim. Resp. 8 (citing Ex. 2002, 14–16). The District Court determined that Petitioner’s asserted construction represented “a distinction without a difference.” Ex. 2002, 17. The District Court determined that Petitioner’s asserted construction would not provide any additional clarity as to the claim scope. Id. (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (Claim construction “is not an obligatory exercise in capture the meaning that Petitioner seeks to affix to that phrase. Accordingly, we determine that the plain and ordinary meaning of the phrase provides sufficient clarity such that further, redundant construction is unnecessary at this stage of the proceedings.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing or implementing cellular networks. Additional work or research experience can substitute for less or different education, and vice versa. A person of ordinary skill in the art would also have had familiarity with the 3GPP technical standards. Pet. 32 (citing Ex. 1003 ¶¶ 28–34) (emphasis omitted). Patent Owner submits an essentially identical description of this hypothetical person. Prelim. Resp. 8–9 (citing Ex. 2001 ¶ 22). We do not determine any 2 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. representations. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the Specification of the ’976 patent and the prior art of record.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We have considered Patent Owner’s argument, but find that Petitioner has articulated sufficient reason to combine the no-uplink teaching of R2-104515, and has sufficiently articulated the manner of such combination. Petitioner points to TS 36.300 V10.0 as presenting the situation in which uplink resources may not be provided. Pet. 59–60, 56–59 (pointing to Patent Owner’s infringement contentions as also indicating that TS 36.300 does indeed discuss a no-uplink situation). Petitioner points to language from R2-104515 that “current agreements” permit that there may be an absence of uplink resources on secondary cells, which raises a question on how to indicate that absence. Id. at 61 (citing Ex. 1013, 1). We agree with Petitioner that, by providing options to answer a question raised in TS 36.300, it would have been obvious for a person having ordinary skill in the art to combine teachings from R2-104515 to resolve that question. Patent Owner’s argument that R2-104515 addresses a situation from TS 36.331, and not from TS 36.300 fares no better. First, TS 36.300 and TS 36.331 generally address the same standard. Ex. 1012, 13. Second, as discussed above, Patent Owner’s infringement contentions support a determination that TS 36.300 contains the no-uplink scenario that is addressed by R2-104515. Third, TS 36.300 V10.0 explicitly cites 3GPP which, through reference in this text, constitute provisions of the present document.” Id. Consequently, we do not agree that the mention of TS 36.331 in R2-104515 diminishes the reason to combine the teachings of R2- 104515 with TS36.300 V10.0. e) Determination In view of the foregoing, we determine that Petitioner has sufficiently shown, for purposes of institution, that each element of claim 2 has been taught or suggested by the combined references. We also determine that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the references as suggested by Petitioner, and would have a reasonable expectation of success in doing so.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,200,976 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Memoryweb, LLCAll claims unpatentablePTAB · Nov 16, 2023 · PGR2022-00034 · APJ Kevin C Trock · PGR · Final written decision
Claims 1–34 are unpatentable: claims 1–25 and 27–34 over Pogue and Engst, and claim 26 over Pogue, Engst, and Ripps.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Cir. 1986)) for its point is also misplaced. In re Hall stands for a different proposition, one which states that “competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible.” Id. at 781 F.2d at 898. Although Pogue and Engst are not doctoral theses, the principal espoused in In re Hall is still applicable here. Ms. Munford’s testimony provides competent evidence of general library practices which can be relied upon to establish an approximate time when a printed publication became publicly accessible. Accordingly, we credit Ms. Munford’s testimony on general library practices and accept her testimony as credible that Pogue was made available to the public by the Carnegie Library of Pittsburgh shortly after acquiring it on January 21, 2009, and that Engst was made available to the public by the Illinois State University Library shortly after acquiring it on May 25, 2009. Ex. 1010 ¶¶ 8–13.” slip op. at 35
- ExcludeMotion to exclude, deniedDenied
“determination in this case. Accordingly, Patent Owner’s motion to exclude Exhibits 1030–1033 is denied as moot.” slip op. at 100
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“d) Conclusion on Independent Claims 1 and 29 We have considered the evidence and arguments with respect to” slip op. at 86
Patent outcomesUS 11,163,823 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,163,823
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.