- PTAB · Dec 12, 2025 · IPR2025-00763 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Zeira alone or Zeira with Yi renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’838 patent based on all grounds set forth in the Petition for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 10 (citing Ex. 1003 ¶ 21). Patent Owner does not contest this at this stage. See Prelim. Resp. Petitioner’s proposed level of ordinary skill appears to be consistent with the problems addressed in the ’838 patent. See Ex. 1001, 1:30–2:48. Therefore, we adopt it for this decision.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,212,838 - PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §103 grounds, finding a reasonable likelihood of unpatentability over the asserted 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. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. 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, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. 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 Ericsson and TS 25.331.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. At this stage in the proceeding, Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,764,803 - Apple Inc. v. Ferid AllaniInstitutedPTAB · Nov 4, 2025 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1–27 on all asserted grounds, finding a reasonable likelihood of unpatentability for claims 21 and 23–26.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “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). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 27 of the ’058 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person of ordinary skill in the art] at the time of the ’058 Patent would have had bachelor’s degree in computer engineering, electrical engineering, or a related field, with two to three years of experience with web-based information systems. Additional education or experience might substitute for the above requirements. Dec., ¶¶37-39. Pet. 3 (citing Ex. 1003 ¶¶ 37–39). Patent Owner contends that: A [person of ordinary skill in the art] at that time would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a 2 US Patent No. 6,119,155 issued Sept. 12, 2000 (Ex. 1004). 3 US Patent No. 6,037,934 issued Mar. 14, 2000 (Ex. 1005). 4 US Patent No. 6,353,839 B1 filed Apr. 30, 1998, issued Mar. 5, 2002 (Ex. 1006). 5 US Patent No. 6,493,702 B1 filed May 5, 1999, issued Dec. 10, 2002 (Ex. 1008). 6 US Patent No. 6,138,158 issued Oct. 24, 2000 (Ex. 1007). similar field. Alternatively, someone with an advanced degree and less professional experience or less education and more professional experience would also qualify as a [person of ordinary skill in the art]. Prelim. Resp. 11. Given that Patent Owner’s definition of a person of ordinary skill substantially overlaps with Petitioner’s definition, and given that Patent Owner does not challenge Petitioner’s definition, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the plain meaning of “beforehand locally stored” requires the claimed selection pages to be present on the local device before a user conducts a preliminary search. Even if we were to agree with Petitioner that a user could download and store selection pages to the local device, such downloading and storing must occur before the user locally performs a preliminary search in order for the selection pages to be “beforehand locally stored” within the scope of claims 1 and 27. We construe the terms “said selection pages being beforehand locally stored” recited in claim 1 and “said selection pages being . . . beforehand locally stored” recited in claim 27 as requiring the selection pages to be locally stored before a user locally performs a preliminary search.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with Petitioner. Rossman discloses times when accessing a web page over the network is unavoidable. Col. 8; see Pet. 21. Himmel teaches that using a bookmark to directly access a desired page is quicker than navigating through intermediate pages to get to the desired page. See Pet. 22–23, 25. Patent Owner does not address Rossman’s disclosure that a request to a network web page may be unavoidable, and does not address Himmel’s disclosure of making a direct request to the desired web page to save time and conserve network resources when accessing the desired web page. On this record, we agree with Petitioner that adding Himmel’s bookmarks to Rossmann’s cards provides the benefit of directly accessing a particular web function, thus reducing network traffic and data usage as compared to navigating multiple web pages to arrive at the particular web function.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 10,943,058 - PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5 and 8–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Koskinen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 7 (citing Ex. 1003 ¶¶ 19–21). Petitioner further argues that “[a]dditional education” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms.6 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Additionally, a person having ordinary skill in the art would have known and been familiar with information elements (IEs) that specified an RLC reordering timer value based on (1) general knowledge that IEs carried information in RRC messages and (2) that 3GPP TSs describe an IE carrying recording timer duration information for the RLC layer. See Ex. 1003 ¶ 151; Ex. 1014, 219–20. Accordingly, it would have been obvious to a person having ordinary skill in the art “that the PDCP timer information, which used similar variables as its RLC counterpart (Koskinen, ¶¶37-38), would also be carried in a PDCP configuration IE.” Ex. 1003 ¶ 151.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,863,573 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · Oct 6, 2025 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Institution
Instituted review of claims 1–11, 18–20, 23–25, and 28 on all petitioned grounds, based on a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’539 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’539 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” Prelim. Resp. 22. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysisbelow. See Okajima, 261 F.3d at 1355 (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no construction should be necessary to institute this petition.” Pet. 20. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 22. Having considered the record, we determine that, at this stage, no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and “how” the references would have been combined. As the Petition explains, Krummacher discloses radiation scattering particles having a size range of 50 to 1000 nm. See Pet. 26 (citing Ex. 1107 ¶ 39). Petitioner further explains that a person of ordinary skill in the art would use Stokes teachings to further refine that size range to optimize the particle size to preferentially scatter blue light. See id. at 26–27. Petitioner further provides reasons, suggested in Stokes itself, why a person of ordinary skill would have made this modification to Krummacher. See id. at 27–28 (citing Ex. 1108, 7:17–26; Ex. 1102 ¶ 128). Petitioner provides sufficient evidence that such a particle size selection was within the level of skill in the art at the time of the invention. See Ex. 1102 ¶¶ 122–128, 140–144; Ex. 1108, 7:1– 17; Ex. 1124 ¶¶ 80–81. We note that we have reviewed the testimony of Patent Owner’s expert, Dr. Schubert, but this testimony does not, at this stage, diminish the weight we give to Petitioner’s expert. Thus, we find that Petitioner has shown sufficiently that the combination of Krummacher and Stokes accounts for this limitation and that a person of ordinary skill would have combined the references in the manner suggested with a reasonable expectation of success.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’539 patent. Accordingly, we institute an inter partes review.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,614,539 - PTAB · Sep 25, 2025 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Director review
The Board instituted inter partes review of claims 1–7, 11–14, and 16–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Petitioner filed a request for Director Review of the Decision granting Patent Owner’s request for discretionary denial and denying institution (“Decision,” Paper 10) and Patent Owner filed an authorized response. See Paper 121 (“DR Request”); Paper 13 (“Patent Owner Response”). The Director granted the DR Request and referred the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” Paper 14 (“Order Granting Director Review”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”) We therefore institute inter partes review as to all of the challenged claims of the ’228 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 584 U.S. 357, 364–65 (2018); 37 C.F.R. § 42.108 (a)” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, Patent Owner did not file a Preliminary Response and thus does not respond at this time. Petitioner’s description is consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our Decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a “single caching agent,” which is recited in claim 1 here. ’1344 IPR, Paper 31 (“Final Written Decision”), 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18.” slip op. at 14
Claim constructioncites KSR · NautilusPatents in suitUS 8,984,228 - Microsoft Corporation v. Partec AGInstitutedPTAB · Jul 8, 2025 · IPR2025-00318 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–10, finding a reasonable likelihood that Lippert and Budenske render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). 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.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that for purposes of the Preliminary Response it has applied Petitioner’s recitation of the level of skill in the art. Prelim. Resp. 15. Patent Owner has not proposed its own articulation of the level of ordinary skill. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Long and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Regarding motivation to combine, Petitioner explains: A POSITA would have been motivated to implement the heterogeneous computing system of Lippert with the dynamic iterative sub-tasks assignment method of Budenske partly because doing so would facilitate efficient distributions of subtasks and processing resources during execution of an iterative application, thus fully leveraging the flexibility of the heterogeneous architecture and “reduc[ing] execution time” of computing iterations. EX1005, 391; EX1003, ¶59. Pet. 17. Petitioner further explains: Second, Budenske provides express motivation from implementing its method in a heterogeneous computing system such as Lippert, namely to “fully utilize the architectural flexibility of such a [heterogeneous parallel computing] system.” EX1005, 390. A POSITA would have found that the dynamic flexibility of the heterogeneous computing system taught by Lippert through the “loose coupling” of computation nodes and boosters (EX1004, [0013], [0015] (describing “a maximum flexibility in providing hardware resources”)), naturally complements the dynamic flexibility of remapping sub-tasks among processing resources to account for the actual processing of the sub-tasks by the processing resources during preceding iterations, as taught by Budenske (EX1005, 391), and that the combination for these teachings would provide increased flexibility for optimally processing iterative applications. EX1003, ¶60.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“teaching away” argument: “As discussed above, Budenske actually teaches away from distributing subtasks between processor types, noting that for its teachings to work all processors utilized for a given task must be of the same type. EX1005 at 392; Section VI.A.1.” Prelim. Resp. 23. We already discussed and rejected above Patent Owner’s contention that Budenske describes its teachings would work only if all processors utilized for a given task are of the same type. Thus, the “teaching away” argument also lacks merit. Alternatively, Patent Owner asserts that even if we reject Patent Owner’s “teaching away” argument, “Budenske’s teachings would have strongly weighed against motivating a skilled artisan to develop a system according to the ‘442 Patent claims.” Prelim. Resp. 23–24. We disagree. As discussed above, Budenske acknowledged that its resource mapping method would be more easily accomplished if all the processors were of the same type. It nowhere indicates, as Patent Owner argues, that the method would work only if all the processors were of the same type. slip op. at 24
§ 103 obviousnessPatents in suitUS 11,537,442 - Tessell, Inc. v. Nutanix, Inc.InstitutedPTAB · Jun 2, 2025 · IPR2025-00298 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–36 under both § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in computer science, computer engineering, or a related field, with two years of academic and/or industry experience with database technologies.” Pet. 13 (citing Ex. 1003 ¶¶ 57–70). Patent Owner has not proposed a level of ordinary skill in the art and does not dispute Petitioner’s stated level of ordinary skill in the art. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bhattacharjee and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner has not proposed an express construction for any claim term. Neither has Patent Owner. For purposes of this Decision, we need not expressly construe any claim term. C.” slip op. at 9
- BurdenInstitutedInstituted
“Because the inputs are used by the processor to create the database, the inputs must be received by the processor prior to creation of the database. Creation of a database is a way of provisioning a database, as explained in the specification of the ‘818 patent. Ex. 1001, 3:41–43 (“Database provisioning services involve creating and/or associating databases with the database system for management and use.”). The SLA then protects the database “after” it is provisioned (per limitation [1D]) and a snapshot may be captured “after” the database is provisioned (per limitation [1E]). For the foregoing reasons, Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 would have been obvious over Sivasubramanian and Zha. 4. Dependent Claims 2–7, 22, 23, 28–30 Claims 2–7, 22, 23, and 28–30 each depend, directly or indirectly, from claim 1. Ex. 1001, 40:31–57, 42:17–22, 42:35–53. Patent Owner does not present arguments for these claims separate from those it submits for claim 1, which we have rejected above in the context of claim 1. We have reviewed Petitioner’s submissions and determine that Petitioner has shown a reasonable likelihood that it would prevail in showing obviousness of claims 2–7, 22, 23, and 28–30 over Sivasubramanian and Zha.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“With respect to limitation [1E], Petitioner asserts that it would have been obvious for one of ordinary skill in the art to incorporate into Sivasubramanian Zha’s feature of user input of the frequency for retrieving snapshots and user input of the “times during the day” for retrieving snapshots. Pet. 52–54. Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1E]. With respect to limitation [1F], Petitioner notes that Sivasubramanian already discloses a user interface to receive the first, second, and third inputs, and asserts that if there are fourth and fifth inputs based on an analysis of limitation [1D], then one of ordinary skill would have used the same interface to receive the fourth and fifth inputs. Pet. 54–55. Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1F]. With respect to limitation [1H], Petitioner asserts that a person of ordinary skill in the art (POSA) “would have understood that the purpose of accepting these inputs [first through fifth] is to use them to ‘create’ a database based on these inputs and based on the amount of storage determined from the user input.” Pet. 57 (emphasis omitted). Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1H], provided that limitation [1D] regarding fourth and fifth inputs is met.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,860,818 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually 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). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. 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 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687
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.