- Deltran USA LLC v. The Noco CompanyInstitutedPTAB · Mar 19, 2025 · IPR2024-01219 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–11 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“of the litigation pending resolution of this proceeding,” was not entirely accurate as of the time of the filing of Patent Owner’s Preliminary Response.12 Id. at. 19. The district court granted a stay in the parallel litigation on December 18, 2024—5 days before the Preliminary Response was due. Ex. 3001 (“Order”). According to the district court, “On balance, . . . staying [the parallel litigation] promotes judicial efficiency and is not unduly burdensome or prejudicial to NOCO.” Id. at 7.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelNot reached
“We agree with Patent Owner that Petitioner has not demonstrated sufficiently that collateral estoppel should apply here as to the “USB port.” Prelim. Resp. 13–14. But, Petitioner does not appear to be requesting collateral estoppel with respect to the “USB port.” Instead, Petitioner argues there is no dispute that the claim limitations 1[PRE], 1(A), 1(D)–1(G) were fully litigated in IPR2020-00944—identifying each limitation of claim except those with a “USB port.” Pet. 35, 37, 42, 43, 46, 48. Petitioner also appears to argue collateral estoppel precludes Patent Owner from disputing “the Board’s findings regarding the prior art and printed publication status of Epower-20 and Epower-21.” Id. at 30. In its Preliminary Response, Patent Owner does not dispute that the above-identified limitations (i.e., limitations 1[PRE], 1(A), 1(D)–1(G)) were fully litigated nor does Patent Owner dispute that Epower-20 and Epower-21 are prior art printed publications. See generally Prelim. Resp. Because Patent Owner’s arguments, at this stage of the proceeding, do not implicate collateral estoppel, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here. The parties are encouraged to further develop this issue over the course of trial including, such as, questions such as whether estoppel should be applied on a limitation by limitation basis, claim by claim basis, or otherwise.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” Prelim. Resp. 22. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’203 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’203 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Duration Media LLC v. Rich Media Club LLCAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Remand
On remand, the Board held claims 1–10 unpatentable as obvious over Krassner, Badros, and Harkins; it did not reach the alternative Badros and Harkins ground.
RulingsRemand decision- RemandOther
“On August 16, 2024, Petitioner filed a Request for Director Review of the Final Written Decision. Paper 73 (“Req.”). Patent Owner opposed the Request. Paper 77. On December 12, 2024, Director Vidal granted the Request and entered a Director Decision. Paper 78 (“Director Dec.”). The Director Decision states that “Petitioner persuasively shows that Badros discloses the viewability test.” Director Dec. 9. Accordingly, the Director Decision vacated the Previous FWD, and remanded back to us for further proceedings. Id. at 13. We have jurisdiction under 35 U.S.C. § 6 and pursuant to the Director’s Decision. For the reasons discussed below, we determine that Petitioner has met its burden to prove, by a preponderance of the evidence, that claims 1–10 of the ’329 patent are unpatentable.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience in computer programming with at least one year of said experience being in the field of internet advertising.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artReference not prior artDecided for patent owner
“Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“subject matter [sought to be patented] pertains,’ this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is ‘too remote to be treated as prior art.’” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). “Whether a reference in the prior art is ‘analogous’ is a determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59.” slip op. at 19
Patent outcomesUS 11,443,329 unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - PTAB · Mar 7, 2025 · IPR2024-01176 · APJ Jason M Repko · IPR · Institution
Instituted IPR of claims 1–23 on all petition grounds; the Board found a reasonable likelihood of success on at least one claim based on MPEG-1.
RulingsInstitution decision- 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). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the ’148 Patent would have had a (1) Bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a comparable field of study such as Physics, and (2) approximately 2-3 years of practical experience with video and/or image processing or coding. More education could substitute for experience, and vice versa. Pet. 5–6 (citing Ex. 1003 ¶¶ 23–24). Patent Owner applied Petitioner’s definition in the Preliminary Response. Prelim. Resp. 16 (Pet. 5–6). At this stage, we adopt Petitioner’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’148 patent and the asserted prior art and (2) it is supported by the testimony of Dr. Eli Saber.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“For purpose of institution, we preliminarily determine that claim 1 requires a sequence-level parameter. The claims themselves provide “substantial guidance” regarding the meaning of claim language. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, claim 1 recites that the level is for encoding a “sequence.” Ex. 1001, 25:56–60. Claim 1 expressly recites that “the digital video sequence compris[es] a number of frames.” Id. at 25:43–44. In this way, claim 1 defines a sequence to exclude a single picture. This reading is consistent with the specification’s focus on a sequence-level solution. According to the ’148 patent, “The present invention improves prior art solutions for indicating QP related information by introducing a sequence level QP” (SQP). Id. at 11:25–27 (emphasis added). Indeed, Petitioner acknowledges that the SQP is the purported improvement. See Pet. 5. Patent Owner agrees. See, e.g., Prelim. Resp. 8–9, 25–26. Claims are not normally interpreted “in a way that excludes embodiments disclosed in the specification.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). A trial could produce additional evidence that may support a determination in the Final Written Decision that defining a picture-by-picture quantization level is somehow “for use in encoding of the digital video sequence.” But, at this stage, the parties have given us little reason to adopt such a construction. There is no dispute that H.263 signals PQUANT at the Picture layer. Pet. 51; Prelim. Resp. 25. Indeed, the basis for Petitioner’s challenge is that PQUANT defines the quantizer for a picture and is updated for GOBs or macroblocks within the picture. Pet. 53. We disagree with the interpretation used in Petitioner’s challenge: a picture-layer quantization parameter falls within the scope of the claim. Id. at 51. Rather, for the reasons discussed above, we preliminarily determine that the claims require a sequence-level parameter. And Petitioner has not sufficiently explained why PQUANT is a sequence-level parameter. Thus, we cannot conclude that Petitioner has shown a reasonable likelihood of prevailing in its challenge to claim 1 with respect to H.263. See id.; Prelim. Resp. 25.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,175,148 - PTAB · Mar 6, 2025 · IPR2024-01223 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).” slip op. at 5
- Parallel petitionsNot reached
“B. Denial Based on Multiple Petitions Patent Owner asserts we should deny the petition in IPR2024-01222 because it is one of two petitions challenging the same claims of the ’389 patent. See Paper 7, 3. Patent Owner does not, however, argue we should deny the Petition in this case. See id. (arguing that “to the extent a trial is warranted, the Board should institute . . . [only] the IPR2024-01223 petition.”). Because Patent Owner contends only that we should deny the petition in IPR2024-01222, we do not address that issue here.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“C. Claim Construction 1. “depositing by shadow mask, sputtering, ink jet deposition, screen printing evaporation” Claim 40 recites “wherein the step for selectively depositing at least one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 15 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 6–7. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Mar 6, 2025 · IPR2024-01222 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 over all petitioned grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“has not requested a stay and there is no evidence the district court would likely grant one. Prelim. Resp. 64. We decline to speculate about how the District Court might rule on a motion that has not been filed. On this record, the first factor is neutral.” slip op. at 6
- Parallel petitionsDecided for petitioner
“of two petitions challenging the same claims of the ’389 patent. See Paper 7, 2. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Here, there is such a dispute because even though the ’389 patent was filed on May 2, 2002 and does not claim priority to any earlier application, as noted above, Patent Owner contends that some of the challenged claims are entitled to an earlier priority date. See Prelim. Resp. 6–14. Given this apparent priority dispute, we agree with Petitioner that two petitions—one asserting prior art that is vulnerable to the priority dispute and one asserting art that is not—are justified. See Paper 3, 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reason below, we conclude there is a reasonable likelihood that Petitioner would prevail in demonstrating at least one of the challenged claims is unpatentable. Pursuant to § 314, we hereby institute an inter partes review to the challenged claims of the ’389 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 10 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 18–19. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Feb 18, 2025 · IPR2024-01187 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, 8–11, and 16 on all asserted grounds, finding a reasonable likelihood that Hanamura renders claim 16 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Statute 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). For the reasons explained below, we determine that Petitioner has shown that there is a reasonable likelihood of prevailing with respect to at least one challenged claim.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“district court proceeding. See supra § I.C. In its Preliminary Response, Patent Owner presents argument regarding the Fintiv factors and urges the Board to exercise its discretion under 35 U.S.C. § 314(a) to deny institution. Prelim. Resp. 43–46. Subsequent to the Preliminary Response, Petitioner filed its Preliminary Reply as well as a stipulation. The Preliminary Reply provides that “[i]f the Board institutes this IPR, Defendants in Pictiva Displays Int’l Ltd. v. Samsung Elecs. Co., No. 2:23-cv-0495 (E.D. Tex.), stipulate not to pursue invalidity defenses based on grounds that were raised or reasonably could have been raised in this IPR.” Reply 1. Similarly, the stipulation provides as follows: Defendants hereby stipulate that, if the Patent Trial and Appeal Board institutes an inter partes review proceeding for U.S. Patent No. 9,257,492 on the grounds presented in the petition in IPR2024-01187, then Defendants will not pursue an invalidity defense in this case that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating requests for discretionary denial, the Board must determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on both grounds. See SAS Q&As, D1 (USPTO June 5, 2018)6 (cited with approval in Boehringer Ingelheim Animal Health Usa Inc., v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (Feb. 24, 2023) (Director Review) at 7–8 n. 3). “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics at 9. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. While prior art similar to one reference presently relied upon in Ground I was considered during prosecution, Patent Owner does not contend that the asserted references in Grounds II or III are the same or cumulative of art that was considered during prosecution. Because it 6 www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf is undisputed that two of the three asserted grounds do not implicate § 325(d), on balance, we determine that the Petition does not raise the same or substantially the same prior art previously presented to the Office. See Asetek Danmark a/s v. Coolit Sys., Inc., No. IPR2020-00825, Paper 12 at 15 (PTAB Oct. 13, 2020) (Decision on Institution) (determining to institute where, “viewing the Petition as a whole, we find that only two of the six asserted grounds . . . implicate § 325(d).”). As a result, we decline to exercise our discretion under section 325(d) to deny institution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical Engineering, Physics, or a comparable field of study, and at least three years of research or industrial experience with semiconductor (organic or inorganic) optoelectronic devices and/or lighting or displays. An individual with additional education could have less research or industrial experience and vice-versa. Pet. 9. For purposes of institution, Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 6 (“Solely for purposes of this Preliminary Response, Pictiva applies the skill level proposed by Petitioner.”). Accordingly, for purposes of institution, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,257,492 - PTAB · Feb 12, 2025 · IPR2024-01139 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–7, 9, and 14–51 on all petition grounds, finding a reasonable likelihood that the TML6–Fandrianto combination renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“presented art includes art listed on an Information Disclosure Statement (IDS) and “art made of record by the Examiner.” Id. at 7–8. Here, the Petition’s challenges are based on TML6 and Fandrianto. Pet. 2. TML6 is substantially the same as art previously presented to the Office because the ’469 patent discusses TML6. See, e.g., Ex. 1001, 8:43–53, 11:33–13:29. Fandrianto was made of record by the Examiner. Ex. 1002, 310; Ex. 1001, code (56). Thus, the first part of the framework is satisfied, and we must proceed to the second part.” slip op. at 13
- Skill levelOther
“We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 26. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,950,469 - PTAB · Feb 12, 2025 · IPR2024-01140 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–51 and all petition grounds, finding a reasonable likelihood that claims 1–20, 22–42, and 44–51 are obvious over TML6 and Fandrianto, and claims 21 and 43 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Absent specific evidence, the Board typically “will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even assuming that evaluating the summary of TML6 in the challenged patent’s background were the same as evaluating the TML6 code, Petitioner has shown under Becton, Dickinson factors (e) and (f) that the Office erred by overlooking the TML6-Fandrianto combination for the reasons discussed below in the analysis of Petitioner’s challenges. See infra Section II.E. That is, we disagree with Patent Owner that Petitioner has failed to meet its burden. Prelim. Resp. 36–37. Thus, none of Becton, Dickinson factors (c), (e), and (f) weigh in favor of denying the Petition under § 325(d). 4. Conclusion We do not exercise our discretion to deny the Petition under § 325(d).” slip op. at 16
- Skill levelOther
“Patent Owner argues that a person of ordinary skill in the art “would be an electrical and/or computer engineer with one to two years of experience relating to video coding hardware and/or software.” Prelim. Resp. 26. We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 27. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,280,599 - PTAB · Feb 12, 2025 · IPR2024-01141 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of all challenged claims on all petitioned grounds, finding a reasonable likelihood that Amazon would prove at least one claim obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 4–17, 19–26, 28, 29, 31–33, 36–49, 51–59, 61, 62, and 64–83 in the ’273 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“For the reasons discussed above, factors (1) through (5) do not favor discretionary denial. See supra Sections III.C.1–III.C.5. Thus, we do not reach “the compelling merits analysis.” See CommScope, IPR2022-01242, Paper 23 at 4–5. Further, the circumstances Patent Owner identifies do not warrant exercising discretion under § 314(a) to deny institution. See Prelim. Resp. 68–69.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same art previously presented to the Office,” we turn to the second part of the Advanced Bionics framework and consider Becton factors (c), (e), and (f) in determining “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” See Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10. For the reasons explained below, Petitioner has demonstrated a material error by the Office. Becton factor (c) concerns the extent to which the asserted references were evaluated during prosecution, including whether a rejection rested on any reference. Becton, IPR2017-01586, Paper 8 at 17. For instance, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Advanced Bionics, IPR2019-01469, Paper 6 at 10. Under Becton factor (c), evaluating the ’273 patent’s description of TML6 differs significantly from evaluating the source code itself. As Petitioner asserts, the TML6 source-code files comprising Exhibit 1005 include “far greater coverage of the components and functionalities of the TML6 codec” and were “not considered by the Examiner.” See Ex. 1001, 8:38–47, 11:25–13:27, 28:36–41, 44:9–11, 46:31–41, 47:27–48:6, 49:24–50:63, Figs. 13a–13c; Ex. 1005; Pet. 126. As explained in the patentability analysis below, Petitioner relies on details in the source code about how the oneforthpix() function works and interacts with the imgY, img4Y_tmp, and mref data structures to establish unpatentability. See infra Sections V.D.4(a)–(d). The ’273 patent does not discuss those software instrumentalities. See, e.g., Ex. 1001, 8:38–47, 11:25–13:27, 44:9–11, 46:31–41, 47:27–48:6, 49:24–50:63. Based on the current record, we see no evidence that the Examiner evaluated the source code itself, which forms the foundation for Petitioner’s challenges.” slip op. at 26
- Skill levelOther
“The parties seem to agree generally about the level of ordinary skill in the art. At this stage of the proceeding, neither party contends that any differences between their respective descriptions of an ordinarily skilled artisan would impact the patentability analysis. During the instituted trial, we encourage the parties to address whether there are any differences between their respective descriptions that would impact the patentability analysis. If so, they should explain how those differences impact the patentability analysis. Based on the current record, our analysis would not change if we adopted Petitioner’s description of an ordinarily skilled artisan or Patent Owner’s description.” slip op. at 30
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,036,273 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Feb 5, 2025 · IPR2024-00920 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–24, 26, 29–33, 35, or 38 were unpatentable over the asserted Koga-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “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 Petitioner has not established a reasonable likelihood that it will prevail in proving the unpatentability of at least one challenged claim of the ’991 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” 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 (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. at 25–26 (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based on the ordinary meaning of the phrases, “spatial samples” and “spatial information” must refer to different information. Because the “spatial samples [are] decoded into spatial information,” the decoded “spatial information” must be different than the coded “spatial samples.” If “spatial information” were the same as “spatial samples,” then there would be nothing to decode. That construction is consistent with the claim construction rule that different terms are presumed to have different meanings. See MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings . . . .”)). Here, we see no evidence that the claim phrases have the same meaning. To the contrary, the ’991 patent uses the term spatial samples to refer to the image’s pixel values. See, e.g., Ex. 1001, 2:65–67 (“the prediction error signal for a single image block is constructed using both transform basis functions and spatial samples (i.e., pixel values)”) (emphasis added); id. at 4:21–26 (same). The spatial information, however, refers to the result of decoding. See, e.g., id. at 3:29–30 (“the plurality of spatial samples are decoded into decoded spatial information”) (emphasis added); id. at 6:53–55 (“the decoded spatial information and reconstructed prediction of the image block are added together to form the decoded representation of the image block”) (emphasis added); id., Fig. 5, 520 (showing “Decoded Spatial Info”). This is consistent with the claim’s plain language. See id. at 10:1–2 (claim 22 reciting “decoding, by a processor, the plurality of spatial samples into decoded spatial information”) (emphasis added). Accordingly, “spatial samples” and “spatial information” do not refer to the same thing.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument. Petitioner maps both spatial samples and spatial information to the residual of the prediction error. Compare Pet. 37 (referring to spatial samples as the residual of the prediction error), with id. at 44 (referring to spatial information as the residual of the prediction error). However, because spatial samples and spatial information cannot refer to the same thing, they cannot both be the residual of the prediction error. See Section II.C.1 supra. Accordingly, Petitioner has not sufficiently shown that claim 22, along with dependent claims 23, 24, 26, and 30 would have been obvious over Koga. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”); Pet. 47–63 (relying on the analysis of claim 22 for the spatial samples and spatial information limitations). With regard to independent claim 31, along with dependent claims 32, 33, and 35, Petitioner relies on the same arguments discussed above for limitation 22a and 22c to show that Koga teaches commensurate limitations 31c and 31d. See Pet. 54 (“As explained above, Koga teaches the shared substantive limitations of [22a]–[22d] (supra §§VI.A.1) that correspond to limitations [31b]–[31e].”). Accordingly, for the same reasons discussed above for claim 22, we are not sufficiently persuaded by Petitioner’s arguments that independent claim 31, along with dependent claims 32, 33, and 35 would have been obvious in view of Koga.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991
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.