- PTAB · Mar 28, 2025 · IPR2024-01505 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–8, 15, 17, and 19–25 because Petitioner showed a reasonable likelihood of proving obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 19 (citing Ex. 1003 ¶¶ 37–39). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 33. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [1a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [1a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36
§ 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · NautilusPatents in suitUS 11,830,546 - 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 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentablePTAB · Jan 8, 2025 · IPR2023-00993 · APJ Michael T Cygan · IPR · Final written decision
Claims 1, 2, 7, 8, 11, 15–17, and 20 are unpatentable under § 103; claims 3–6, 9, 14, and 19 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that it would require experience with electro-mechanical control systems rather than electronic consumer product design. PO Resp. 3. Because Petitioner provides for “similar knowledge and experience through other means,” we do not discern any meaningful distinction. Thus, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Determining whether a limitation that does not use the term “means” invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Limitation [1b] With respect to limitation [1b], a “moveable component,” Petitioner argues that it should be construed as a means (component) having a function (moveable) that corresponds to a structure (a moving weight). Pet. 7. Petitioner argues that “essentially any physical component can perform the function of being moved,” references different types of structure as the moving components in the ’830 patent, and concludes that therefore the term has no definite structure. Pet. Reply 2 (citing Ex. 1001, Figs. 4A–4G, 14, 15–17). Patent Owner argues for a non-means-plus-function construction of a component that “is capable of being moved.” PO Resp. 7–8 (citing Ex. 2008 ¶ 55). Patent Owner argues, and Petitioner agrees, that “there is likely no material difference between” the parties’ proffered constructions such that construction is necessary. Id. at 8; Pet. Reply 7. We agree, because Petitioner has shown, and Patent Owner does not contest, that the prior art teaches such a component under either construction. Infra § II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that a showing of motivation is required. Whether a proposed combination rests on “combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). The General Electric decision cited by Petitioner does not hold otherwise. In General Electric, the Federal Circuit considered an obviousness challenge based on combining disclosures from multiple references. See Gen. Elec., 983 F.3d at 1339–40, 1344–52. The Federal Circuit criticized the Board for dissecting an embodiment disclosed in the primary reference into a collection of “individual elements” and requiring the patent challenger to “re-do the work already done” regarding that embodiment in the primary reference. Id. at 1351–52. The Federal Circuit did not consider an obviousness challenge based on combining multiple embodiments from a single reference. See id. at 1344–52. Therefore, we do not agree with Petitioner that no motivation to combine the Figure 3 and Figure 83 embodiments of Fukumoto need be shown.” slip op. at 29
Patent outcomesUS 9,941,830 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,941,830 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - PTAB · Nov 7, 2024 · IPR2024-00605 · APJ Jameson Lee · IPR · Institution
Instituted review of claims 9–14, 23–28, and 30 on all petition grounds; Petitioner showed 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. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’714 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’714 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Based on the foregoing arguments, which lack specifics and do not sufficiently map the particular teachings from Rusert relied on by Petitioner to the disclosures of Han, Tai, and Huang, we do not find Rusert to be cumulative of these references. Further, even if all of Rusert’s teachings 13 Han, Woo-Jin, et al., Improved Video Compression Efficiency Through Flexible Unit Representation and Corresponding Extension of Coding Tools, 20 IEEE Transactions on Circuits and Systems for Video Technology 1709 (2010). 14 Tai, Shen-Chuan, et al., A Multi-Pass True Motion Estimation Scheme with Motion Vector Propagation for Frame Rate Up-Conversion Applications, 4 Journal of Display Technology 188 (2008). 15 Huang, Ai-Mei, et al., A Multistage Motion Vector Processing Method for Motion-Compensated Frame Interpolation, 17 IEEE Transactions on Image Processing 694 (2008). relied on by Petitioner can be found in Han, Tai, and Huang as a collection of separate partial teachings from each, that still does not demonstrate Rusert as a cumulative reference. The quality of disclosure simply is not the same if three references have to be combined to yield what Rusert itself discloses. Patent Owner also does not explain how it combines Han, Tai, and Huang to provide the same teachings relied on from Rusert by Petitioner.16” slip op. at 65
- Parallel petitionsDenied
“Although we do not think 30 claims are too numerous for one petition to cover, many claims in the ’714 patent are extraordinarily lengthy and include numerous limitations. For example, claim 6, which depends from claim 5 which depends from claim 1, is more than one column long in the ’714 patent. The length of claim 20, which depends from claim 19, which depends from claim 15, also is more than one column long in the ’714 patent. Additionally, we agree with Petitioner that the subject matter of the ’714 patent is complex. We further agree with Petitioner that the division of claims among the two petitions, i.e., encoder claims in IPR2024-00604 and decoder claims in IPR2024-00605, is a structured division which helps to facilitate the handling of two petitions. Patent Owner has not presented arguments urging that the filing of two petitions by Petitioner against the ’714 patent is excessive. For the foregoing reasons, we determine that the filing of two petitions by Petitioner against the ’714 patent is reasonable under these circumstances. We decline to exercise discretion to deny either petition on the ground of the Petitioner filing an excessive number of petitions against the ’714 patent.” slip op. at 69
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Creusere, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 21 (citing Ex. 1003 ¶¶ 57–59). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 31. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not 11 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,536,714 - Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentablePTAB · Nov 5, 2024 · IPR2023-00757 · APJ Steven M Amundson · IPR · Final written decision
Claims 1, 2, 4–10, and 12–16 are unpatentable as obvious over Hariki and Harris; claims 3, 11, and 17–20 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for patent owner
“Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, the patentee “must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence,” and thus the product is not coextensive with the patented invention, “there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). For example, “[a] prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Circ. 1988).” slip op. at 113
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“Conclusion About Obviousness/Nonobviousness For the reasons discussed above, the combined disclosures in Hariki” slip op. at 119
- ExcludeMotion to exclude, deniedNot reached
“In our analyses above, we do not rely on any of Exhibits 2023 to 2027. See, e.g., supra §§ III.C.2–III.C.4. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 135
Patent outcomesUS 8,989,715 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,989,715 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,204,134 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00507 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood of proving claims 2, 4–6, 12, 15, 21, 23–25, 31, and 34 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, she or he was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not provide written description support for the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“and assuming that Cheng discloses backing up of data from a first user device to a second, new user device, without any user service bureau in between, Petitioner has not shown sufficient motivation to combine the teachings of Kodama with the teachings of Kesanupalli and Cheng to account for the remainder of limitation [1.8], i.e., initiate the backup “based at least in part on the first device being a same brand as a second device.” Ex. 1001, 25:7–10. Petitioner explains:” slip op. at 40
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00333 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not indicate possession by the inventor the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25. Patent Owner states: “A determination ‘based on’ policies and the identity of the device would have conveyed to a POSITA that the backup could have been based on a policy including the device being of the same brand as the second device.” Prelim. Resp. 46 (emphasis in original). The assertion is misplaced because it refers to what “could have been” a policy, rather than what policy the provisional application disclosure conveys the inventor actually possessed. What potentially “could have been” is mere speculation, not written description indicating possession.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. McDaniel, Petitioner asserts a person of ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). 9 The record does not include any evidence of secondary considerations of nonobviousness. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 12). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts: Kodama recognizes “if data restoration is to be performed to a different product or a different manufacturer, the format and product proprietary information of data between the products will differ.” APPL-1010, [0157]. POSITA would recognize this differing format can create compatibility issues and thus would recognize an advantage of, and reason for, basing the initiation of data transfer to the second device on brand and thereby avoiding these compatibility issues as taught by Kodama. APPL- 1003, ¶190. Pet. 60. But the same brand requirement of Kodama is not provided to solve any problem with differing formats. Kodama states: At Step 1313 of the restoration processing, if data restoration is to be performed to a different product of a different manufacturer, the format and product proprietary information of data between the products will differ. Thus, before the restoration processing function of the online backup service system 0128 sends the data read at Step 1318 to the HDD recorder 0116, the data format is converted into the file format of the HDD recorder 0116 of the restoration destination. Ex. 1010 ¶ 157. Kodama does not describe format compatibility as presenting any problem. Requiring brand identity between the first device and the other devices of the user in Jakobsson ’351 to synchronize data among all of the user’s devices is also not an advantage. The devices of the user in Jakobsson ’351 are devices the user already owns, possesses, and uses. They are not a new device as in the case of Kodama, where a broken device may be expected to lead to the user acquiring a new device of the same brand as replacement. Petitioner provides no explanation as to why one would expect all of the user’s devices in Jakobsson ’351 would be of the same brand. Applying a same-brand requirement would substantially undermine and may even render inoperative Jakobsson ’351’s feature of synchronizing user data among all of the user’s devices. We do not see this result as either an advantage or an improvement.” slip op. at 51
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105
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.