- 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 · Jan 27, 2025 · IPR2024-01130 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 5–9 on all asserted grounds, finding a reasonable likelihood that BOE would prevail 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). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 5–9 of the ’842 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“impact the Board’s exercise of discretion, including the merits.” Fintiv, Paper 11, 6. “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily denied institution under Fintiv.” Memorandum, 4–5. On the other hand, “in 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.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, factors 1–5 are either neutral or weigh at least slightly against discretionary denial of institution. Thus, on balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution, and we need not decide whether Petitioner presents a compelling unpatentability challenge. 1. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“the art “would have had a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately one or more years of professional experience with electronic and optoelectronic system design,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 3 (citing Ex. 1002 ¶¶ 45–46). Patent Owner does not offer an alternative definition. See generally, Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art (without adopting, however, Petitioner’s open-ended “or more” language).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties have submitted proposed claim constructions. Pet. 4–7; Prelim. Resp. 6. At this stage of the proceeding, however, we do not see the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,168,842 - PTAB · Jan 27, 2025 · IPR2024-01132 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–7 and all asserted grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Paper 1 (“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1–7 (the “challenged claims”) of U.S. Patent No. 7,586,121 B2 (“the ’121 patent”). 35 U.S.C. § 311. Optronic Sciences LLC (“Patent Owner”) filed a Preliminary Response, Paper 7 (“Prelim. Resp.”), contending that it “does not believe the Petition merits institution.” Prelim. Resp. 1. The Patent Owner Preliminary Response does not include any substantive analysis of Petitioner’s challenges. Id. We have jurisdiction under 35 U.S.C. § 6. 35 U.S.C. § 314 provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) at the time of the invention as having “a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design” and notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 5–6 (citing Ex. 1002, Neikirk Decl. ¶ 23). Patent Owner does not comment on the level of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 5–6, Prelim. Resp. 1. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation Anticipation is a question of fact, as is the question of what a prior art reference teaches. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011). “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 Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,586,121 - PTAB · Jan 27, 2025 · IPR2024-01134 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–5 based on reasonable-likelihood showings for anticipation over Hekmatshoar and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2024). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–5 of the ’733 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Hekmatshoar; 2) claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Hekmatshoar and Gupta or Han; and 3) claims 1–5 are unpatentable under 35 U.S.C. § 103 as obvious over Lee ’149 and Hekmatshoar or Weaver. FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The plain language in claim 1 of “auxiliary electrode” does not suggest a requirement that the “electrode” precludes “wires and/or bus lines,” as Patent Owner proposes. Prelim. Resp. 1; see Ex. 1001, 8:55–58. Further, nothing in the Specification clearly limits “auxiliary electrode” to preclude a wire or a bus line. Here, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue such that an “electrode” cannot be a wire or a bus line. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984). Although the Specification discusses various examples wherein an auxiliary electrode may be implemented, Patent Owner points to no special definition, implicit or explicit, for “auxiliary electrode” that is set forth in the Specification which supports Patent Owner’s construction with reasonable clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480. In view of the plain language of the claims and the Specification, we determine that the term “auxiliary electrode” recited in claim 1 does not preclude a wire or a bus line. We determine no further explicit construction is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Hekmatshoar’s Interconnect is “an electrode . . . supplemental to other electrodes in the structure” that is “electrically insulated from driver TFT” and disposed at “the right side” of “the light emitting device (OLED that includes layers ITO-anode, organic, cathode).” Pet. 19–22; Ex. 1003 ¶¶ 91–95. That is, we find availing Petitioner’s contention, which Patent Owner does not contest, that, like the ’733 patent’s auxiliary electrode 460, Hekmatshoar’s Interconnect is electrically insulated from an active device and disposed at a side of a light emitting device. Id.; see also id. at 2 (annotated Figure 6 of the ’733 patent). We also find availing Petitioner’s contention that Hekmatshoar’s Interconnect is electrically connected with “the first electrode layer (ITO-anode [red]) of the light emitting device (OLED).” Id. at 19. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Hekmatshoar describes “an auxiliary electrode electrically insulated from the active device and disposed at a side of the light emitting device, wherein the auxiliary electrode is electrically connected with the first electrode layer of the light emitting device.” iv. Conclusion On the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that claim 1 would have been anticipated by Hekmatshoar.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“iv. Conclusion On the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that claim 1 would have been obvious over Lee ’149 and Hekmatshoar or Weaver. Furthermore, on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Lee ’149 and Hekmatshoar or Weaver. v. Claims 2–5 Petitioner provides detailed explanations as to how Lee ’149 in combination with Hekmatshoar or Weaver renders obvious claims 2–5, depending from claim 1, citing Dr. Baker’s testimony for support. Pet. 39–53 (citing Ex. 1005 ¶¶ 24, 26–27, 30, 38, Fig. 1; Ex. 1003 ¶¶ 141–153, 155–166). Having reviewed Petitioner’s arguments and supporting evidence in the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of claims 2–5 would have been obvious over Lee ’149 and Hekmatshoar or Weaver.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,406,733 - PTAB · Jan 27, 2025 · IPR2024-01133 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that Weaver anticipates certain claims and the asserted Weaver combinations render the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution: factors 1, 4, and 5 are neutral and factors 2 and 3 weigh at least slightly against exercising discretion to deny institution. As a result, for this factor 6, we need not decide whether Petitioner presents a compelling unpatentability challenge on the merits. 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 on Discretionary Denial Under § 314(a) As noted in Fintiv, we consider the above six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that, weighing these factors in a holistic analysis, the circumstances here favoring institution outweigh the overlapping of issues in the district court litigation. Therefore, we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under § 314(a) to deny institution of this Petition.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2024). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. V. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–13 of the ’509 patent to determine whether: 1) claims 1–5, 9, 12, and 13 are unpatentable under 35 U.S.C. § 102 as anticipated by Weaver; 2) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Lee ’053; 3) claim 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Song; 4) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Lee ’149; 5) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Bae; 6) claims 1–5, 9, 12, and 13 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Gupta or Han; 7) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Lee ’053, and Gupta or Han; 8) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Song, and Gupta or Han; 9) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Lee ’149, and Gupta or Han; and 10) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Bae, and Gupta or Han. FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of the plain language of the claims and the Specification, we determine that the term “auxiliary electrode” recited in claim 1 is neither limited to an anode or cathode, nor precludes “a power line, bus line, or resistor” or any electrode that “provides a sole, critical electrical connection to a load.” We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find Patent Owner’s arguments unavailing. In particular, we find unavailing Patent Owner’s contention that “‘bus line 430’ is not an ‘electrode’” (Prelim. Resp. 4), because Patent Owner is relying on a claim construction of “electrode,” requiring “an anode” or “cathode” and excluding a “bus line” (id. at 16), that is not adopted by our construction discussed above. Thus, we are unpersuaded by Patent Owner’s contention that Weaver fails to disclose the “auxiliary electrode” limitation because “Weaver never refers to its ‘bus line 430’ as an anode, cathode, or electrode.” Id. Although Patent Owner contends that “bus line 430 is not ‘auxiliary’ or ‘supplemental’ to anything” (Prelim. Resp. 4), we are persuaded by Petitioner’s reliance on Weaver’s bus line 430 for providing the claimed “electrode,” that is “supplemental to other electrodes in the structure.” Pet. 18; see also Ex. 1004 ¶ 26, Fig. 4; Ex. 1003 ¶ 92. We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that a POSITA would have understood that “anode 406 and bus line 430 are connected in parallel,” which means that “bus line 430 is a supplemental electrode that reduces the total resistance of the pixel structure.” Pet. 19; Ex. 1003 ¶ 94. Thus, we find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Weaver’s bus line 430 is an electrode supplemental to other electrodes in the structure that is electrically insulated from transistor 410 by passivation layer 409, wherein OLED 400, which includes cathode 422, organic layer 424, and anode 406, is disposed above bus line 430, and wherein anode 406 of OLED 400 is electrically connected to bus line 430 by via 428. Pet. 16–19; Ex. 1003 ¶¶ 89–94. That is, we find availing Petitioner’s contention, which Patent Owner does not contest, that, like the ’509 patent’s auxiliary electrode 120, bus line 430 is electrically insulated from transistor 410, wherein OLED 400 is disposed above bus line 430 and anode 406 electrically connected with bus line 430. Id.; also compare Pet. 2–3 (annotated Figure 2 of the ’509 patent) with id. at 16, 20 (annotated Figure 4 of Weaver). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Weaver teaches “a first auxiliary electrode electrically insulated from the active device,” and “a light emitting device disposed above the first auxiliary electrode,” wherein “the light emitting device comprises a first electrode layer electrically connected with the first auxiliary electrode.”” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,263,509 - Copeland Comfort Control LP v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–5, 7–11, 13–16, and 20–21 are unpatentable: claims 1–5, 7–11, and 20–21 over McFarland, and claims 13–16 over McFarland and Kates-089.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Claim 1 recites “a multi-sensor package configured to detect a plurality of variables and generate sensor data for each detected variable.” Ex. 1001, 10:46–48. Both parties agree that a “multi-sensor package” is a single packaged device with multiple sensors, not a group of individual sensors. See PO Resp. 6; Pet. Reply 2. Claim 1 does not recite a multi-sensor package with “multiple operational sensors.” Patent Owner does not explain the difference between operational sensors and sensors “configured” as recited in claim 1 or why claim 1 should be construed as requiring an “operational” limitation that does not appear in the claim. Consequently, a requirement that the sensors comprising the package be “operational” is neither required by claim 1 nor suggested by the language of claim 1.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 46–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. We apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’282 patent and the prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“McFarland discloses an exemplary sensor 209 that “is configured as any of a temperature sensor, humidity sensor, fire sensor, pressure sensor, smoke sensor, occupancy sensor, air quality sensor, gas sensor, O2, CO2, or CO sensor, accelerometer, velocity sensor, [or] combinations thereof” and “may be . . . micro-mechanical sensors . . . or larger sensors for sensing any condition or parameter.” Ex. 1027 ¶ 43 (emphasis added). Patent Owner submits that paragraph 43 of McFarland describes “a device . . . that sense[s] conditions, parameters and/or events such as an environmental condition in a building.” PO Resp. 28 (emphasis added). Based on the foregoing, we find that McFarland teaches “a multi-sensor package configured to detect a plurality of variables.” Ex. 1002 ¶ 72 (“sensor 209 may be configured to detect multiple different variables including temperature, humidity, and other variables”); Ex. 1027 ¶ 43. McFarland further discloses “sensor 209 generates information or data related to the sensed or monitored condition” and “output as one or more signals that may be read by the processor 214.” Ex. 1027 ¶ 43. McFarland further discloses that “information may be generated in response to a physical stimulus such as light, sound, pressure, heat, magnetism, motion, and/or acceleration” that “may be detected as a result of sensing or monitoring the conditions or parameters.” Id.; see also id. ¶ 44 (“A signal generated by the sensor 209 may be an indicator of the sensed condition.”). McFarland also discloses that “processor 214 implements a control process for the device 207” that “may be implemented based on a signal that is read from and/or provided by the sensor 209, such as a measured value of a parameter, an indicator of a sensed condition and/or status of an event.” Id. ¶ 39. Thus, we find McFarland teaches that sensor 209 “generate[s] sensor data for each detected variable.” Ex. 1002 ¶ 74 (“For each condition that it monitors, the sensor generates and outputs sensor data for each measured variable in the form of ‘a measured variable’ or ‘indicator.’” (citing Ex. 1027 ¶¶ 39, 45, 47)). For the foregoing reasons and after reviewing Petitioner’s evidence in light of Patent Owner’s contentions, we find that McFarland teaches this limitation.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Motivation to Combine/Reasonable Expectation of Success Petitioner contends that McFarland discloses that a wireless automation device wakes up and enters a standby or sleep mode in response to a report instruction. Pet. 46. Petitioner acknowledges that McFarland “does not explicitly state that the ‘report instruction’ includes a ‘wake-up command’ or describe how the device is instructed to return to a ‘sleep’ mode between reporting intervals.” Id. (citing Ex. 1027 ¶¶8, 18, 48, 62). Petitioner next contends that Kates-089 “teaches that such a ‘report instruction’ comprises a ‘wake-up command,’ and that a controller issues a ‘standby mode’ instruction (i.e., a ‘power down command’).” Id. (citing Ex. 1029 ¶¶ 78, 82, 86). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify McFarland with” the teachings of Kates-089 “to advantageously facilitate reporting data both periodically and in response to commands while conserving power via ‘wake-up’ and ‘standby’ (i.e., power-down) commands.” Id. (citing Ex. 1002 ¶ 147; Ex. 1027 ¶ 62; Ex. 1029 ¶¶ 40, 74–75, 82, 86); id. at 47 (arguing that an ordinarily skilled artisan in light of Kates-089 “would have been motivated to modify McFarland’s ‘report’ instruction to include a wake-up command” (citing Ex. 1002 ¶ 149)) (emphasis omitted). Petitioner further contends that an ordinarily skilled artisan would have been motivated to combine McFarland and Kates-089 “to save power consumed during, e.g., the 99.9% of the polling interval when the device may otherwise be unnecessarily turned on.” Id. at 48 (citing Ex. 1002 ¶ 150). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success “applying Kates-089’s wake-up and power-down command teachings to McFarland’s wireless automation device” because “McFarland already teaches that the wireless automation device wakes up and powers down in response to certain commands[] and such commands were well understood.” Pet. 48 (citing Ex. 1002 ¶ 151; Ex. 1005 ¶ 32; Ex. 1027 ¶¶ 8, 18, 48, 62; Ex. 1032, 12:48–54; Ex. 1033, 12:16– 22) (emphasis omitted). Patent Owner does not address motivation to combine or reasonable expectation of success for claim 13. See PO Resp. 26–35. We have reviewed Petitioner’s evidence and contentions and find that” slip op. at 45
Patent outcomesUS 8,224,282 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,224,282 - PTAB · Aug 26, 2024 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1 and 5–8, on all asserted grounds, after finding a reasonable likelihood of success on the Li, Wu, and Paunikar challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“X. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed in showing that at least one of the challenged claims is unpatentable on the following challenges to patentability, including: Claims 1 and 5–8 as unpatentable over Li, Paunikar, and Wu. XI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’845 patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan) as having “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking, including experience with the IPv4 and IPv6 protocols, or a related field,” and noting that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003, Bhattacharjee Decl. ¶ 62). Patent Owner does not contest Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 19. The level of ordinary skill in the art may be evidenced by the references themselves. 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). As the level of skill agreed to by the parties appears commensurate with the subject matter of the ’845 patent and the references, we apply this description for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003, Bhattacharjee Decl. ¶ 201. For example, the ’845 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21, Ex. 1003 ¶ 201; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 78–79 (citing Ex. 1003, Bhattacharjee Decl. ¶ 207). As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 79–80 (citing Ex. 1003, Bhattacharjee Decl. ¶ 211). Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 76–80; Ex. 1003 ¶¶ 199–212. On this record, Petitioner shows sufficiently that an ordinarily skilled artisan would have had reason to combine the cited teachings of Li and Wu.” slip op. at 51
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,451,845 - PTAB · Aug 8, 2024 · IPR2024-00485 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that claims 1–10 would have been obvious over Li and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner notes that several claim terms previously were construed by a district court in another case. Pet. 10–14 (citing Ex. 1036). Patent Owner proposes construing the term “domain” to mean “a network or subnetwork and its address space that are under common control.” Prelim. Resp. 19–21. Petitioner disagrees with Patent Owner’s proposed construction of the term “domain.” Pet. 31. We determine that no claim terms require express construction for purposes of this Decision. As discussed below, even if we assume that the term “domain” means “a network or subnetwork and its address space that are under common control,” Petitioner shows sufficiently that at least one of the challenged claims is unpatentable. See Section II.E.1. As a result, we need not resolve the parties’ dispute about the meaning of the term “domain” for purposes of this Decision. 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.’”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“As discussed above, Petitioner presents evidence that although Li-2 “never became an official Internet-Draft published in the IETF directory,” Li-2 remained in the IETF’s staging folder. Pet. 20–22; Ex. 1009 ¶¶ 10–11. But the evidence of record indicates that the IETF’s staging folder may contain thousands of documents. Prelim. Resp. 35; Ex. 1008 ¶ 4; Ex. 1044. This raises the issue of whether a person of ordinary skill in the art exercising reasonable diligence could have located Li-2 simply by browsing the filenames of the numerous documents in the IETF’s staging folder. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response. Petitioner also presents evidence that the IETF’s Datatracker included Li-2 for “a given period” after the authors canceled Li-2. Pet 22; Ex. 1008 ¶ 11. But Petitioner does not indicate how long the IETF’s Datatracker would have included Li-2 (e.g., hours, days, weeks, years). See Pet. 22; Prelim. Resp. 36; Ex. 1008 ¶ 11. This raises the issue of whether Li-2 was present in the IETF’s Datatracker such that a person of ordinary skill in the art exercising reasonable diligence could have located Li-2. Patent Owner may address this issue again and present any other arguments regarding this asserted ground in its Patent Owner Response.” slip op. at 7
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On this record, Patent Owner’s argument is unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003 ¶¶ 213–214. For example, the ’844 patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21; Ex. 1003 ¶ 213; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 69; Ex. 1003 ¶ 210. As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 68–69; Ex. 1003 ¶ 207. Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 69–70; Ex. 1003 ¶¶ 210–211.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,451,844
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.