- Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Mar 18, 2025 · IPR2024-01284 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’540 patent. We exercise our discretion to institute inter partes review and, as required, we do so as to all the challenged claims of the ’540 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“issued an order temporarily staying all deadlines and hearings scheduled in the matter.6 Ex. 1058, 1–2. The District Court’s order notes that Patent Owner asserts 8 patents in the litigation, that IPRs have been instituted on 4 of those patents covering 10 of the 14 claims asserted in the litigation, and that further consideration of a stay will depend upon whether IPRs are instituted on patents including the 4 remaining claims. Id. at 1, 3. The District Court also ordered the parties to update their positions on a stay within one week of a decision on institution. It is unclear if, and when, a new trial date would be set. In light of this stay, we determine that this factor weighs strongly against discretionary denial. 2.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Ex. 1051 ¶ 30. Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having reviewed the parties’ arguments we determine, as explained further below in our analysis of claim 1 (§ III.D.4.a), that an express construction of the term “file” is not necessary at this stage of the proceeding. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,310,540 - Apple, Inc. v. Omni Medsci Inc.All claims unpatentablePTAB · Feb 14, 2025 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Remand
On remand, the Board determined claims 1–23 unpatentable, finding claims 3–6 and 8–14 obvious under the asserted combinations and leaving the prior findings on other claims intact.
RulingsRemand decision- RemandOther
“No appeal was taken as to claims 1, 2, 7, and 15–23. Consistent with the Federal Circuit’s Mandate, we have reviewed the merits and determine 3–6 and 8–14 are unpatentable, and recognizing that all other claims have previously been determined to be unpatentable, we determine that claims 1–23 are unpatentable.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our mandate is to consider the argument the Court determined we did not consider in the Petitioner Reply, which argument, as each party acknowledges, both parties had the opportunity to discuss in the briefs that are in our current record. Under the circumstances, we determine that no additional briefing is required to carry out that mandate.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Final Decision, we determined that the term “identify an object” in claims 3 and 8 is distinguished from the term “detect an object,” e.g. as in claim 1. Final Dec. 8–10. The Court affirmed our construction of “identify an object” to mean “to recognize or establish an object as being a particular thing.” Fed. Cir. Dec. 10. The Court remanded, however, for further consideration of a “properly raised” argument Petitioner advanced in the Petitioner Reply with respect to our construction, referred to by the Federal Circuit as “the alternative argument.”. Id. at 2, 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner counterargues that it is not required to show why a person of ordinary skill would have considered every permutation of these references together and that it provided specific reasons for including features of Isaacson into Lisogurski’s device. Pet. Sur-reply 24–25. According to Petitioner, a person of ordinary skill would have had reason to incorporate Isaacson’s sensor (an arrangement of LEDs and detectors) into Lisogurski’s device, which taught that any known sensor layout could be used. Id. (citing Ex.1011, 17:39–45; Ex.1003 ¶¶ 239–240). Petitioner further argues that the ordinarily skilled artisan would have looked to Isaacson because it discloses a known arrangement for that the sensor component of Lisogurski’s device, and because it also taught solutions to potential problems identified in Lisogurski (e.g., with skin pigmentation). Id. (citing Pet. 68–69; Ex.1003 ¶ 243; Ex.1063, 7:59–62, Fig. 1).” slip op. at 9
Patent outcomesUS 10,517,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,517,484 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01206 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that the challenged claims would have been obvious under the asserted Yerazunis- and Ely-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution of this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 9,912,914. As all the claims of the ’471 patent are challenged in this proceeding, Petitioner’s stipulation applies to the entirety of the ’471 patent. In view of Petitioner’s stipulation, the substantial number of issues to be addressed in the District Court, Patent Owner’s acknowledgement that Petitioner’s expert report in the parallel litigation repeats the assertions in this Petition, and the potential reduction of issues to be tried in the parallel litigation, our weighing of the factors is against exercising discretion to deny institution. As discussed below, we also recognize that Petitioner’s contentions have merit. In consideration of the above, we decline to exercise discretion to deny institution. We now address the substantive issue presented in the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 13 (the “challenged claims”) of U.S. Patent No. 9,485,471 B2 (“the ’471 patent”). 35 U.S.C. § 311. Stellar LLC (“Patent Owner”) filed a Preliminary Response, Paper 8 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 6. 35 U.S. C. § 314 provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s arguments that an ordinarily skilled artisan would not have had reason to combine the teachings of Yerazunis and Fiore are similar to its substantive arguments that the references fail to disclose the limitations of the claims. We address these arguments in the context of the claim limitations separately below. We note that Petitioner does not rely on Fiore as disclosing all the claim limitations, and instead cites Fiore as disclosing a memory management structure applicable to the system disclosed by Yerazunis. In the context of the claimed subject matter, we determine that, for purposes of this Decision, Petitioner has demonstrated a person of ordinary skill would have had reason to apply the memory mapping structure from being overwritten, as taught by Yerazunis.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) as having “at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003, Sarhan Decl. ¶¶ 24–25). Petitioner further states that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not address the qualifications of a person of ordinary skill in the art. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In 4 U.S. Patent 7,158,167, issued Jan. 2, 2007 (Ex. 1017) 5 U.S. Patent Publication No. 2002/191952, published Dec. 19, 2002 (Ex. 1009) 6 U.S. Patent Publication No. 2004/008255, published Jan. 15, 2004 (Ex. 1019) 7 EP 1,064,783, published June 4, 2003 (Ex. 1015) 8 U.S. Patent 5,982,418, issued Nov. 9, 1999 (Ex. 1020) description of a person of ordinary is commensurate with the subject matter of the ’471 patent and the references, we apply Petitioner’s description for purposes of tie Decision.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,485,471 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01207 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that at least one claim is unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution on this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 8,692,882; and IPR2024-01208, challenging claims 1–23 of U.S. Patent” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons arguments do not directly address the specific combination proposed by Petitioner nor the specific motivations provided by Petitioner. For example, as explained further below in our analysis of claim 1, the gun embodiment of Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’s video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’s gun implementation in which individual segments are stored in the circular buffer. See Pet. 28 (“Yerazunis does disclose that in a gun camera embodiment, ‘the head pointer 104 and the tail pointer 102 . . . defining the area(s) of the circular buffer memory, are stored in a table to allow later retrieval of the video data pertaining to each firing of the gun.’” (quoting Ex. 1017, 17:50–56)); see also Pet. 30–32, 38–39.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“of Yerazunis in combination with Fiore. On this record, Petitioner has demonstrated the similarities in the data recording systems of Yerazunis and Fiore. Petitioner asserts a reasonably sufficient basis for establishing the “specified frame data associated with [the] firing event” to be preserved as the disclosure of a designated segment that is write-protected. Based on the current record, we find Petitioner’s evidence more persuasive than Patent Owner’s assertion that Yerazunis preserves the entire buffer—not designated segments. Again, Petitioner admits Yerazunis does not expressly refer to “indexing write-protected segments as second files” but further establishes with sufficient basis that a person of ordinary skill in the art would understand the tagging features of Yerazunis aligns with the concept of indexing. Further, Petitioner shows that eventually it will be necessitated to locate or retrieve the data, providing further motivation for indexing, which is not only disclosed in Fiore, but demonstrated as well known in the art. See Pet. 28–29. Petitioner demonstrates the combination of Fiore and thus, on the current record, we are not persuaded by Patent Owner’s argument that Yerazunis only preserves post-recording data. Patent Owner further does not provide sufficient basis of reasoning that the “memory designation scheme” of Yerazunis which uses “unused block[s] of memory” establishes there is no write-protected segment. In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate that person of ordinary skill in the art would have had a rational basis to combine the teachings of Yerazunis and Fiore and this combination teaches these limitations of element 4.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,692,882 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01208 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–23 on all four §103 grounds, finding a reasonable likelihood of success based on Yerazunis or Ely, with Fiore and Lewellen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–17. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 23 (the “challenged claims”) of U.S. Patent No. 9,912,914 B2 (Ex. 1031, “the ’914 patent”). 35 U.S.C. § 311. Stellar LLC (“Patent Owner”) filed a Preliminary Response, Paper 8 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 6, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contentions Concerning Reasons to Combine Teachings of Yerazunis and Fiore Noting that Yerazunis and Fiore both concern recording devices with circular buffers that preserve data before and after a trigger event, Petitioner contends that an ordinarily skilled artisan would have had reason to combine the teachings of the references to incorporate into Yerazunis the benefits Fiore articulates concerning its file-based storage approach in such systems. Pet. 21. Petitioner emphasizes Fiore’s discussion of how implementing a circular buffer as a memory mapped file that indexes event data combines the access speed of the RAM memory with the large capacity of a disk file, making the indexing of data in memory mapped file 110 transparent to the circular buffer’s access objects. Id. at 21–22. Petitioner also emphasizes that an ordinarily skilled artisan would have had a reasonable expectation of success, given Fiore’s detailed disclosure of applying its techniques in a system like that of Yerzunis. Id. at 22 (citing Ex. 1003, Sarhan Decl. ¶¶ 168–172).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) as having “at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003, Sarhan Decl. ¶¶ 24–25). Petitioner further states that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not address the qualifications of a person of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s proposed description of a person of ordinary is commensurate with the subject matter” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,912,914 - PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 patent and 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).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’428 patent and 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).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 patent and 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).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - PTAB · Dec 11, 2024 · IPR2024-00963 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted obviousness grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner contends we should exercise discretion to deny institution because the court has not considered a motion to stay (Factor 1), jury selection in the District Court Litigation is scheduled to begin on February 17, 2026 (Factor 2), the parties have invested substantially in discovery by exchanging a high volume of documents and conducting extensive source code reviews (Factor 3), there is a high overlap between the challenged claims and those involved in the District Court Litigation (Factor 4), the parties are the same (Factor 5), and Petitioner’s arguments are meritless (Factor 6). Prelim. Resp. 35–36. Patent Owner acknowledges that jury selection in the District Court Litigation will not begin until two months after a Final Written Decision is scheduled to issue in this proceeding. Prelim. Resp. 35. On October 17, 2024, Petitioner offered the following Sotera Stipulation: “VusionGroup will not pursue an invalidity defense in Hanshow Tech. Co., Ltd. et al. v. SES-imagotag SA et al., Case No. 2:23-cv-00617 (E.D. Tex.) that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Ex. 1031. In view of all the circumstances, including the scheduled trial date and Petitioner’s Sotera stipulation, we decline to exercise discretion to deny institution.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we determine that Petitioner has demonstrated a reasonable likelihood that it will succeed on each of its challenges to patentability and we institute inter partes review. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’321 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. FURTHER ORDERED that the trial is authorized on all grounds set forth in the Petition; and.” slip op. at 39
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“1999)); see also Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding.” Pet. 6. Nevertheless, Petitioner also proposes constructions of certain “system” limitations, should the Board determine that the claims recite “means plus function” limitations, and argues that interpreted this way, such claims would be indefinite because they lack disclosure of sufficient algorithms for the claimed functions. Pet. 6–7. Petitioner acknowledges that, because the claims do not use the term “means,” there is a presumption against their being interpreted as means plus function limitations and that purported indefiniteness does not preclude the Board from addressing the patent patentability of the claims on sections 102 and 103 grounds. Id. (citing Sony Elecs. Inc. v. Jawbone Innovations, LLC, IPR2023-01352, Paper 7, 47 (PTAB Mar. 6, 2024); Ex. 1003 Houh Decl. ¶¶ 51–52); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Patent Owner argues the claims do not recite means plus function limitations and agrees with Petitioner that no claim construction is required. Prelim. Resp. 7–8. The standard is whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Williamson F.3d at 1349, Dyfan LLC v Target Corp., 28 F.4th 1360, 1365–1366 (Fed. Cir. 2022); see also Zeroclick LLC v. Apple Inc., 819 F.3d 1003, 1008–1009 (Fed. Cir 2018). Having reviewed the claims and the Specification, for purposes of institution, we determine that an ordinarily skilled artisan would have understood the subject matter that is claimed to have a sufficiently definite meaning as the name for structure so additional claim construction is required.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill (“POSITA” or “ordinarily skilled artisan”) as having “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics or automated object recognition methods and systems. Pet. 6 (citing Ex. 1003, Houh Decl. ¶¶ 18–19). Petitioner also states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes of this proceeding, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 7. 5 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed after March 16, 2013, we apply the AIA statutory basis for unpatentability. 6 U.S. Patent Application Publication No. 2012/0195363 (Ex. 1005) 7 U.S. Patent No. 8,139,817 (Ex. 1006) 8 U.S. Patent Application Publication No. 2011/0113461 (Ex. 1007) 9 U.S. Patent Application Publication No. 2014/0044348 (Ex. 1009) 10 U.S. Patent No. 8,634,601 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of the level of ordinary skill appears commensurate with the scope of the subject matters claimed and the references, we apply Petitioner’s description in this proceeding.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,701,321 - Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentablePTAB · Nov 5, 2024 · IPR2023-00758 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5–10, 12–14, and 16–21 are unpatentable as obvious over Hariki and Harris; claims 4, 11, 15, and 22–33 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“in the browser,” e.g., content resulting from HTML files received from the web server. Ex. 2029, 68:15–18. Accordingly, an ordinarily skilled artisan “would have understood that customizing” the “application program environment or display and sound aspects of the device” using a UI content package “would mean that the converted resources (i.e., ‘custom configuration’) of the UI content package were applicable to all HTML files received from the web server and displayed” by the web browser program. Ex. 1002 ¶ 159; see Ex. 1005 ¶¶ 19, 24, 42.” slip op. at 105
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s motion to exclude evidence (Paper 30) is dismissed as moot; and” slip op. at 134
Patent outcomesUS 8,478,245 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,478,245
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.