- ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01026 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 5–8 and 16–19 on all petition grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’304 patent. Accordingly, we institute an inter partes review of claims 5–8 and 16–19 of the ’304 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 5[a] receiving, at a second conditional access client of the second conditional access server, an authentication through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses the second root of trust for the second security domain which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. 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” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’304 patent.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,667,304 - Aylo Freesites Ltd v. Wellcomemat, LLCInstitutedPTAB · Dec 6, 2024 · IPR2024-01101 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claim 17 on all five grounds, finding a reasonable likelihood of prevailing based on Gupta and Vasilevsky with Logan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to challenged claim 17 in the ’286 patent. Accordingly, we institute an inter partes review of claim 17 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“The USPTO Director has issued “binding agency guidance” for application of the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”), 3.12 Pursuant to the Guidance Memo, “the PTAB will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Id. (citing Sotera). Petitioner has filed a Sotera stipulation providing that: Petitioner and its real parties-in-interest will not pursue in the related district court proceeding where Petitioner is a defendant (WellcomeMat, LLC v. Aylo Holdings Sarl et al., No. 2:23-cv-00483-JRG (E.D. Tex.)) an invalidity challenge of claim 17 based on “any ground that [Petitioner] raised or” slip op. at 12
- Skill levelSkill level board ownOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. 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.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction For purposes of this proceeding, Petitioner and Patent Owner both advocate for the “plain and ordinary meaning” of the claim terms without further analysis. Pet. 15 (citing Ex. 1002 ¶¶ 72–73); Prelim. Resp. 14–15. On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are invited to address claim construction in their briefs. III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) - FINTIV Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a)” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,307,286 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 5, 2024 · IPR2024-01023 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all petitioned grounds because Roku showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation. Petitioner proposes the following construction: “authentication processes that are performed by independent roots of trust—i.e., roots of trust with trust determinations that are independent of the outcome of the other.” Reply 3 (citing Ex. 1001, 8:16–38 (“the secondary CA server follows rules (e.g., CA messages) of the primary CA server to manage a secondary subscriber management system”)); see also id. at 5 (“‘independent’ . . . identifies how the first and second roots of trust” “arrive at their first and second authentication determinations, without relying on the output of the other”). Petitioner also asserts that Patent Owner’s patentability argument hinges on a construction of “independent” such that “‘independent’ as used to modify the first and second roots of trust must be construed as independently controlled,” which Petitioner asserts is inconsistent with the ’236 patent claim language and specification. Id. at 1. Patent Owner, for its part, denies that it is advocating for a construction where the two roots of trust are “independently controlled.” Sur-Reply 3. Patent Owner does not offer a construction of the “independent authentication” limitation, citing an unilluminating description where “the client authentication in the secondary security domain is completely independent from the client authentication in the 8 The parties are reminded of the Board’s sanction authority for non-compliance. 35 U.S.C. § 316(a)(6); 37 C.F.R. § 42.12(a)(1). primary security domain.” Id. at 4 (citing Ex. 1001, 8:33–35). On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are ordered to propose and support a specific construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 130[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 32 and 66 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (stating “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir.1991)). We find that, at this stage of the proceeding and based on the present record, Petitioner provides sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 4, 2024 · IPR2024-01024 · APJ Brian P Murphy · IPR · Institution
Instituted IPR on claims 48–50, 57, 82–84, 91, 116–118, 125, and 140–142; the petition showed a reasonable likelihood of anticipation by Russ, but not obviousness over Russ.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11
- Parallel petitionsOther
“5 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice. We agree with Petitioner’s reasoning and decline to exercise our discretionary denial authority under 35 U.S.C. § 314(c). 6 Contrary to Patent Owner’s contention that Petitioner does not show that Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and experience, in systems involving multi-media content distribution and management and/or related fields, including as an inventor of over 50 patents in fields that include encryption, MPEG systems, and transfer of digital content, including Russ (Ex. 1005), along with extensive engineering experience in related fields, is more than adequate on this preliminary record to qualify Dr. Wasilewski as an artisan of ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be 5 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice. We agree with Petitioner’s reasoning and decline to exercise our discretionary denial authority under 35 U.S.C. § 314(c). 6 Contrary to Patent Owner’s contention that Petitioner does not show that Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and experience, in systems involving multi-media content distribution and management and/or related fields, including as an inventor of over 50 patents in fields that include encryption, MPEG systems, and transfer of digital content, including Russ (Ex. 1005), along with extensive engineering experience in related fields, is more than adequate on this preliminary record to qualify Dr. Wasilewski as an artisan of ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004. considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 140[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 48, 82, and 116 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - Aylo Freesites Ltd v. Wellcomemat, LLCInstitutedPTAB · Sep 5, 2024 · IPR2024-00710 · APJ Brian P Murphy · IPR · Institution
The Board instituted review of claims 13–15 and 18–20 on all five asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’286 patent. Accordingly, we institute an inter partes review of claims 13–15 and 18–20 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“demonstrated so-called “compelling merits” in its Grounds of challenge. Pet. 5; Prelim. Resp. 47; Reply 5; Sur-Reply 4–5. The Director has clarified her Guidance Memo, such that “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 Techns. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23, 4–5 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Because we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution, we do not reach the question of whether Petitioner has demonstrated “compelling merits” in support of its unpatentability challenges. Conclusion Regarding Discretionary Denial On balance, we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution. Therefore, we decline to exercise our discretion to deny institution of inter partes review under Section 314(a).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On the present record, we determine Petitioner’s argument and evidence show a reasonable likelihood it would prevail in showing the unpatentability of independent claim 13 as anticipated by Gupta.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On the present record, Patent Owner’s arguments do not address Dr. Houh’s detailed testimony or Petitioner’s proposed substitution of the Internet as taught by Logan, in place of the HAN in Vasilevsky’s system. For example, the substitution of the Internet for the HAN in Vasilevsky would appear to provide the centralized media server as a server-side “video editing environment” recited in claim Limitation 13.1. See Ex. 1002 ¶¶ 318 (“processor and memory [] at the server-side such that the centralized media server executes software for serving clients”), 319 (“computer-readable media of Vasilevsky comprises a video editing environment in the form of software for both editing bookmarks and streaming video, executed by the centralized media server and storages”), 321 (“Logan . . . teaches implementing a television program bookmarking system using a public network, i.e., the Internet”), 322 (“Logan discloses the desirability of implementing its bookmarking system over a public network such as the Internet”), 323 (proposed “modification would have beneficially allowed more users access via a wider public network to participate in the system to add, modify and playback video bookmarks”). On the present record, Dr. Houh’s declaration testimony stands unrebutted and provides a motivation for a POSITA to combine references with a reasonable likelihood of success.” slip op. at 38
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,307,286 - PTAB · Aug 14, 2024 · IPR2024-00207 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–25, 38, and 39 on all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one claim.
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). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’249 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The mixing operation described in Botha appears materially different than that described in Löppönen. The Office acknowledged in allowing the ’249 patent that in Löppönen’s mixed stream, “the user still hears only one group at a time.” Ex. 1003 at 32, 76–77. That does not appear to be the case in Botha. In Botha, the combination of a variety of audio streams [occurs] in such a way that each participant will hear all other participants’ voices except their own. This is known as an ‘N minus l’ mix- where ‘N’ represents the sum of all audio streams entering a[t] the core logic of the invention, and the ‘minus l’ portion refers to the subtraction of the current participant’s stream from the stream returned to them. Ex. 1004, 10:35–43. 3. Conclusion Based on the current record before us, we determine that Petitioner is not asserting the same or substantially the same art or arguments previously presented to the Office with respect to Botha (Ground 1). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).3 E. Prior Art References” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have had at least a B.S. degree in electrical engineering, computer science, or a similar field, plus approximately three years of industry in networking or communication systems, in particular address interoperability between different types of networks and satellite communications. Pet. 7–8 (citing Ex. 1002 ¶ 68). Patent Owner “does not dispute the proposal provided by Petitioner as to who would qualify as a POSITA.” Prelim. Resp. 6. pre-AIA law applies. See Prelim. Resp. Accordingly, we cite to pre-AIA § 103(a). We regard Petitioner’s definition as consistent with the ’249 patent and the asserted prior art, and the definition is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that we can determine whether to institute trial without having to resolve Petitioner’s assertion of indefiniteness. See Samsung, 948 F.3d 1355 (question of indefiniteness “is simply another ground on which the claims might be challenged in an appropriate forum,” and “does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds”). Independent claim 25 is directed to a system for providing a push-to- talk proxy media service, reciting a “means for receiving,” a “means for mixing,” and a “means for transmitting,” among other things. Ex. 1001, 25:51–64. Petitioner identifies the recited functions and provides corresponding structures for these “means for” limitations recited by claim 25 pursuant to 35 U.S.C. § 112 ¶ 6. Pet. 10–11. Patent Owner “maintains that the proposed constructions for these three claim terms are overly limiting since the specification provides support for a broader range of structures, at the least, and does not concede to the constructions provided by Petitioner.” Prelim. Resp. 6. It is not necessary for us to resolve the claim construction issues identified by the parties in order for us to determine whether to institute inter partes review of the ’249 patent. Accordingly, for purposes of this Decision and based upon the preliminary record, we decline to expressly construe any of the claim terms at this point in the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). This preliminary Decision, however, does not prevent the parties from proposing, presenting evidence, or arguing a same or different construction of the claims during trial. The parties are encouraged to present their claim construction arguments and evidence as permitted by our rules.2 A final claim construction will be determined after the close of all the evidence and after any oral hearing in this matter. D. Discretionary Denial – 325(d)” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,145,249 - PTAB · Aug 13, 2024 · IPR2024-00511 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood of success on the Shaffer-Keller obviousness challenge.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’949 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“below, we agree with Petitioner on this record that the ’852 patent claims lack priority to the parent application, Shaffer. For example, paragraph 34 of the ’299 application11 resulting in the ’852 patent explains that “IS 102 (FIG. 1) can determine if the endpoint 104 adheres to the rules of transmission.” Ex. 1004 ¶ 34. This paragraph does not state that any other device (such as the endpoint itself) receives a determination from the IS that the endpoint does not adhere to the rules of transmission. Figure 7, reproduced below, is similarly devoid of any such description: 11 U.S. App. No. 14/523,299 (Ex. 1004). The specification describes Figure 7 as “an example methodology that can facilitate dynamic communication between non-compatible communication devices.” Ex. 1004 ¶ 55. The specification further explains that “if the device demonstrates that it cannot comply with the behavioral characteristics of the interoperability system, the device can be attached to a VTG [virtual talk group] via a proxy,” in blocks 710 and 714 of Figure 7. Id. ¶ 56. But the ’299 application does not explain that this lack of compliance is communicated to any device, such as an endpoint.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also sets forth a rationale to combine Shaffer and Keller. Id. at 33–34. For example, Petitioner argues that Shaffer’s goal was to provide a way for incompatible endpoints to work using “standards-based IP technologies,” and Keller’s SIP protocol is an established “standards-based IP technolog[y]” for signaling in PTT. Id. at 33 (citing Ex. 1016 ¶ 2; Ex. 1002 ¶ 155). Petitioner asserts that a POSITA would have looked for an example of such a system, such as Keller’s SIP-based system, for a PTT system as in Shaffer. Id. at 33–34. Combining these systems therefore 15 This appears to be a typographical error, as Petitioner appears to be quoting Ex. 1024 ¶ 122. “would have been seen by a POSITA as nothing more than a combination of known elements according to their established functions to achieve an expected result, and would been considered to constitute nothing more than a routine engineering task that was well within the skill level of a POSITA,” Petitioner argues. Id. at 34 (citing Ex. 1002 ¶ 155). On this record, we agree with Petitioner that the combination of Shaffer and Keller discloses limitation [1c] and determine that Petitioner articulates a sufficient rationale to combine these references.” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had “at least a bachelors’ degree in electrical engineering, computer science, or a similar field, plus approximately three years of industry in networking or communication systems, in particular address interoperability between different types of networks and satellite communications,” and that “[a]dditional education in the fields of electrical engineering or computer science, such as a masters or doctorate degree, could substitute for professional experience in the field.” Pet. 14–15. Petitioner adds that “[a] person with less or different education but more relevant practical experience, or vice versa, may also meet this standard.” Id. at 15. Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 7. Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’852 patent and the asserted prior art.” slip op. at 6
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,319,852 - Motorola Solutions, Inc. v. Sta Group LLCInstitution deniedPTAB · Aug 6, 2024 · IPR2024-00479 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–11 were obvious over Choksi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). slip op. at 5
- BurdenDecided for patent owner
“Patent Owner contends, and we agree, that “the Petition ignores that the proxy is ‘dynamically inserted to connect . . . the endpoint to a virtual talk group.” Prelim. Resp. 17. Petitioner’s argument fails because the 5 Elsewhere, Petitioner mentions “virtual talk group” in the context of the recited “rules of transmission” (Pet. 27) and trusted endpoint identity (Pet. 30), but neither of these passages provides an explanation of how Choksi discloses “receive a first determination from the IS . . . that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group.” Petition provides no explanation as to what constitutes claim 1’s “virtual talk group” in Choksi, let alone that Choksi teaches “that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group” as claimed. Even if we were to agree with Petitioner that Choksi’s signaling bridge is a dynamically inserted proxy, Petitioner does not explain how the signaling bridge “connect[s] the endpoint to a virtual talk group.”” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner contends, and we agree, that “the Petition ignores that the proxy is ‘dynamically inserted to connect . . . the endpoint to a virtual talk group.” Prelim. Resp. 17. Petitioner’s argument fails because the 5 Elsewhere, Petitioner mentions “virtual talk group” in the context of the recited “rules of transmission” (Pet. 27) and trusted endpoint identity (Pet. 30), but neither of these passages provides an explanation of how Choksi discloses “receive a first determination from the IS . . . that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group.” Petition provides no explanation as to what constitutes claim 1’s “virtual talk group” in Choksi, let alone that Choksi teaches “that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group” as claimed. Even if we were to agree with Petitioner that Choksi’s signaling bridge is a dynamically inserted proxy, Petitioner does not explain how the signaling bridge “connect[s] the endpoint to a virtual talk group.”” slip op. at 10
§ 103 obviousnesscites GrahamPatents in suitUS 9,319,852 - PTAB · Aug 5, 2024 · IPR2024-00595 · APJ Brian P Murphy · IPR · Institution
Instituted IPR of claims 1–18 on all grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including obviousness over Pierre and Gershman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Advanced Bionics Part 2 We also consider whether Petitioner has demonstrated the Office erred “in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9; see also NPRM at 28700 (“material error may include misapprehending or overlooking clear, specific evidence in the prior record, including teachings of the relevant prior art that impact the patentability of the challenged claim”). We evaluate Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated material error. Id. at 10. Those factors are: (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. According to our precedent, “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 [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (Director Review vacating Board decision denying institution, finding examiner misapprehended or overlooked prior Board determinations regarding same references in related IPR). In evaluating Becton, Dickinson factors (c) and (e), we determine Petitioner has shown the Examiner erred by overlooking Gershman’s teaching of a “moving plate” and digital image capture of an unrestrained chick as a disclosure of the “unrestrained chick” limitation. More particularly, the record evidence at this stage of the proceeding indicates the Examiner did not meaningfully consider Gershman’s disclosure: (i) of Figure 3, showing a chick on a “moving plate,” (ii) of Figures 5 and 6, digital images of a chick “reflexively” opening its wings without restraint for image capture, or (iii) that it would have been “obvious” to “adapt[]” and “add” the “moving plate” system to the “end” of industrial chick processing lines. Pet. 10, 22, 36–37 (compare Ex. 1002, 220–221, 226–228 with Ex. 1003, 1, 2, 5, 6, 10). Regarding Becton, Dickinson factor (f), the Petition presents additional evidence and facts, including material teachings of the new Pierre reference regarding the “unrestrained chick” limitation as detailed in Part 1 above, that warrant inter partes review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’124 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’124 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“unrestrained chick” limitation in independent claims 1 and 6. Pet. 36–37, 39–40. Petitioner emphasizes Pierre’s teaching of placing a chick in a position where it is falling so that it will open its wings “naturally” for image capture by a digital camera. Id. at 36, 39 (citing Ex. 1004, 4). Petitioner argues it would have been obvious to use Gershman’s moving plate to cause a chick to fall and “reflexively” open it wings for image capture as in Pierre, “because both Pierre and Gershman are in the same field and directed to solving the same problem, namely, automating assessment of chicks by imaging their wings.” Id. at 37, 39–40. Patent Owner does not address the argument. See Prelim. Resp. 12–15. On the present record, we agree with Petitioner’s reliance on Pierre-Gershman and also refer to our analysis of Ground 1 and the teaching of Gershman’s “moving plate” as a disclosure of the “unrestrained chick” limitation. On the present record, Petitioner’s argument and evidence support the position that Pierre and Gershman are analogous art and the proposed combination of Pierre-Gershman teaches the “unrestrained chick” limitation. slip op. at 24
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,806,124
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.