- Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution
The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- BurdenDecided for patent owner
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,557,788 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687 - Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentablePTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15
Patent outcomesUS 11,041,087 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,041,087 - Peloton Interactive, Inc. v. NEC CorporationNo claims unpatentablePTAB · Mar 3, 2025 · IPR2023-01239 · APJ Michael J Strauss · IPR · Final written decision
Claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 were not determined unpatentable because the asserted obviousness grounds failed to establish the claimed code-rate determination.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by the testimony of Dr. Reader, argues that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree, or equivalent, in electrical engineering, computer science, a related field, and 2–3 years’ experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 14 (citing Ex. 1006 ¶¶ 67–69). Petitioner further argues “[o]ne having less education but more practical experience, or more education and less experience, might also meet this standard.” Id. Patent Owner does not dispute Petitioner’s definition or offer an alternative level or skill in the art. PO Resp. 12 (citing Pet. 14; Ex. 2012). Instead, “[f]or the purposes of this PO Response only, Patent Owner applies Petitioner’s definition of POSITA.” Id. Thus, on this record, the parties agree upon the proposed level of ordinary skill in the art, and this level is consistent with our review and understanding of the technology and descriptions in the ’101 patent and the prior art references that disclose content delivery systems. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“the gap between the playback deadline and the target schedule, (td(n) − tT(n)), is the target buffer duration, i.e., ‘the desired client buffer duration (in client time).’” Id. at 22–23 (quoting Chou ¶ 74). Petitioner also argues that “in efforts to match upper bound tb(n) to target schedule tT(n), Chou takes into consideration the time duration between target schedule tT(n) and the playback deadline td(n).” Thus, it appears Petitioner assembles three separate and distinct time intervals from Chou’s timing diagrams and equations to construct one contiguous time interval equivalent to claim 1’s remaining time. However, Chou does not recognize the time interval that Petitioner posits, and Petitioner has not persuasively shown that this combined time interval exists as a teaching in the prior art and is used as part of any step or decision involved in determining the code rate. As admitted by Petitioner’s expert, Dr. Reader, Petitioner’s analysis “used the claims as a road map to find limitations in the prior art.” Ex. 2015, 76:4–9 (Reader Deposition Transcript). See also Tr. 28:20–31:2 (Petitioner’s response to whether identification of and integration of separate time ranges described by Chou is hindsight reconstruction, Petitioner argues Chou’s device operates such that code rate is based on remaining time). Under the circumstances, this is improper because Petitioner and Dr. Reader do not justify this combination of separately identified time ranges except based solely on hindsight reconstruction of the claimed invention. However, even if that were not the case, we are not persuaded that Chou or the other asserted prior art references suggest using the combined time interval td(n) − ta(n) as the basis for any decision related to determining the code rate.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“d) Analysis In our Institution Decision, although expressing some uncertainty with respect to certain of Patent Owner’s arguments on the preliminary record then before us, “we [were] not persuaded by Petitioner’s contentions that [(1)] Wang teaches [1d]’s code rate” (Dec. 53 (citing Pet. 62–65) or (2) “a POSITA would have been motivated to combine the teachings of Chou and Wang” (id. at 54 (citing Pet. 74)). Petitioner does not dispute those determinations in its Reply or otherwise. Furthermore, Petitioner does not address or otherwise dispute Patent Owner’s arguments challenging the asserted obviousness of claims 1, 4–6, 10–16, and 19–26 over the combined teachings of Chou and Wang. Thus, for at least the reasons set forth in our Institution Decision, we agree with Patent Owner that Petitioner fails to show that (1) one skilled in the art would have combined the teachings of Chou and Wang or (2) the combined teaching of Chou and Wang renders limitation 1(d) obvious. e) Conclusion Regarding Claim 1 For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that independent claim 1 is unpatentable over the combination of Chou and Wang.” slip op. at 47
Patent outcomesUS 8,752,101 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,752,101 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision
Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Jan 28, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–3, 5, 7–13, 15–19, and 23–25 based on the asserted grounds; the Board found a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’448 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’448 patent was filed after March 16, 2013, the effective date of the relevant amendment, the AIA versions of §§ 102 and 103 apply. communication technologies.” Pet. 5 (citing Ex. 1003 ¶ 13–15). For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner contends that “no claim elements need a formal construction for purposes of resolving controversies in this proceeding.” Pet. 5. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Zhang, in light of Zill’s suggestion, to generate wakeup packets at Zhang’s server 404 rather than at end user 406. Pet. 36 (citing Ex. 1004 ¶¶ 61, 62; Ex. 1003 ¶¶ 112–119). Petitioner contends that doing so would have allowed Zhang to accommodate more types of requesting computers, including legacy hosts that might not have the software or hardware to securely process Zhang’s query replies and generate wakeup messages. Id. at 36–37 (citing Ex. 1004 ¶¶ 61, 62, 64, 65, 77; Ex. 1005 ¶ 111; Ex. 1003 ¶ 113). Petitioner also argues that generating the wakeup messages at the server would improve security, as servers would have been able to operate better security features. Id. at 37 (citing Ex. 1004 ¶ 36; Ex. 1005 ¶¶ 40, 111; Ex. 1003 ¶¶ 114–115). Petitioner further argues that generating wakeup messages at the server would have reduced the quantity of messages exchanged containing sensitive information, reducing the risk of interception by a malicious actor. Id. at 37–38 (citing Ex. 1003 ¶ 116). Petitioner further argues that it would have been more efficient to generate the wakeup message at the server, as Zill suggests, as the server can include optimized hardware. Id. at 38 (citing Ex. 1003 ¶ 117). According to Petitioner, the combination would only require combining familiar elements according to known methods, to yield predictable results, and that a skilled artisan would have a reasonable expectation of success doing so. Id. at 38–39 (citing Ex. 1003 ¶¶ 118–119). Patent Owner does not yet contest these allegations. Upon consideration of Petitioner’s evidence, including Mr. Kardashov’s testimony, we are persuaded that Petitioner shows sufficiently that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Zhang and Zill.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - PTAB · Jan 28, 2025 · IPR2024-01192 · APJ Michael J Strauss · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 16 on all asserted §103 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
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’916 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–10 and 16 of the ’916 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the ’916 patent “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 12–14). Patent Owner has not provided any proposed qualifications for a person of ordinary skill in the art. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’916 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 9 (citing Ex. 1003, ¶¶ 43–44; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011), Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. § 42.100). Patent Owner presents no proposed claim constructions at this time. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (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 foundReasonable expectation foundInstituted
“First, Petitioner contends, with the Kardashov Declaration providing supporting testimony, that a [person of ordinary skill in the art] would have understood that implementing [the] Lorex Manual’s system to include a conventional “network server” that facilitates hole-punching (as suggested by Kim941) would provide an improved and advantageous approach for establishing a P2P connection between the DVR and remote client device when the DVR is located behind a firewall and/or network address translator (NAT) that would otherwise prevent the remote client device from initiating a P2P connection with the DVR (e.g., due to common security policies of firewalls/NATs that block unsolicited inbound communications from devices outside of the DVR’s local network). Id. at 15 (citing Ex. 1003 ¶ 74; Ex. 1008 ¶ 18–19, 121).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,916 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. 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 stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203
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.