• Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentable
  PTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48

  Patent outcomesUS 8,886,753 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,886,753
• Apple Inc. v. Theta IP, LLCSome claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-00819 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Behbahani, Leete, and Tan; claim 20 was not shown unpatentable because the references did not teach its required comparison of desired and interferer signal strengths.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. At the institution stage, we did not see a material difference in the proposals given that both parties also indicate that more education could substitute for less experience and vice versa, and thus adopted Patent Owner’s proposal. Inst. Dec. 9. We requested that the parties address during trial if either believed that the choice of one proposal over the other would make a difference in the patentability analysis. Id. Neither party has done so. Accordingly, because nothing in the record persuades us that our preliminary finding in the Institution Decision was incorrect, and because neither party has challenged our finding, we maintain our adoption of Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Here, as in the Director’s example, Petitioner advanced a narrower construction of the dynamic limitations before the district court, which the district court declined to adopt. Pet. 9; Ex. 2015; Ex. 2025, 31–47. Instead, the district court adopted a “plain-and-ordinary meaning” construction, which Patent Owner proposed. PO Resp. 38; PO Sur-reply 10 n.2; Ex. 2015; Ex. 2025, 31–47. In the Petition, Petitioner proposed applying the plain and ordinary meaning construction that had already been preliminarily adopted by the district court. Compare Pet. (filed May 1, 2024) with Ex. 2015 (preliminarily adopting plain and ordinary meaning construction on March 25, 2024). Applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR. Thus, we give the dynamic limitation its plain-and-ordinary meaning, which is “adjusting during operation based—at least in part—on information gained during operation.”” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In our Institution Decision, we stated that we “will give the term ‘signal path’ its ‘plain and ordinary meaning’ and not limit it only to analog components, as the district court found and the parties agree.” Inst. Dec. 11. Given that the parties continue to agree on this point, we see no need to depart from the construction we adopted in our Institution Decision. Moreover, applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR for the same reasons as discussed above. In this proceeding, the dispute between the parties concerns the application of this and the surrounding claim language (i.e., “in the receiver signal path,” “in the signal path”) to the disclosures in Behbahani. See PO Resp. 43–45. Therefore, we will provide further discussion in the context of the parties’ arguments regarding Behbahani below. However, we agree with Patent Owner’s plain reading of the claim language to the extent it requires adjusting an impedance and/or bias current of a circuit while it is in the signal path. See Id. at 50–51.” slip op. at 14

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner’s arguments generally fail to address why Behbahani’s Variable Bandpass Filter Block does not teach the recited “plurality of circuits [comprising/including] . . . a filter,” and instead focus on why the low-pass and high-pass filter circuits do not teach the limitation, which is not Petitioner’s position. As stated above, we agree with Patent Owner’s plain reading of the claim language – i.e., that it “requires adjusting the bias, in or of a circuit.” See PO Resp. 49. However, Patent Owner’s reading of the claim does not persuasively address why the Variable Bandpass Filter Block does not teach the recited “circuit.” We have reviewed Dr. Larson’s cited testimony and disagree with Patent Owner that he provided “a well-supported opinion . . . as to why a [person of ordinary skill in the art] would not understand the entire bandpass box to be a single ‘circuit,’ or to reflect variation in ‘an impedance’ or ‘a bias’ in the claims.” Sur-reply 4 (citing Ex. 2020 ¶¶ 46–48, 71, 74–83). Dr. Larson testifies that the ’330 patent (which has the same specification as the ’164 patent) “teach[es] these adjustments [that dynamically change operating parameters] as changes effected in a single circuit block.” Ex. 2020 ¶ 46 (citing, e.g., Ex. 1001, Figs. 8A, 9A, 8:20–25, 8:36–39, 9:36–59, 10:1–18 (emphasis added)). Dr. Larson does not provide further explanation as to what he means by a “single circuit block,” but relies on Figures 8A and 9A, which show a “function block,” and other disclosures referring to a “function block.” See id. There is no dispute that the recited “circuit” in the receiver signal path is referring to these “function blocks.” See Tr. 22:20–23:4. The ’164 patent states that Figure 8A, which includes function block 820, is “an embodiment of the present invention” 8:28–30. Similarly, Figure 9A, which includes function block 920, “illustrate[s] one of the possible power saving techniques.” Id. at 3:41–42. The ’164 patent describes that “[f]unctional block 820 . . . may be a filter, mixer, amplifier, or other circuit or circuits in a wireless transceiver or other electronic circuits or system.” Id. at 8:30–33 (emphasis added). Based on these disclosures, we are not convinced that Function Block 820 or 920 cannot include multiple filters in a Variable Bandpass Filter Block, or that Behbahani’s Variable Bandpass Filter Block does not teach the recited “circuit.” Dr. Larson also relies on Figure 6 of the ’164 patent to conclude that” slip op. at 45

  Patent outcomesUS 11,564,164 mixed
  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,564,164
• Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentable
  PTAB · Sep 5, 2025 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over Afshary and Mirfakhraei; claim 2 was not shown unpatentable over either asserted combination.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” is too narrow. Although Patent Owner points to various parts of the ’518 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses twisted pair wiring and satellite communications as media that can be used. See, e.g., Ex. 1001, 1:27–29, 3:33–35, 3:49–50, 3:67–4:3, 5:61–6:3, 8:20–23, 9:28–33. Accordingly, we adopt the following level of ordinary skill in the art for use in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to four years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find that this skill level is consistent with the problems and solutions identified in the ’518 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 15

  • Expert testimonyDecided for petitioner

    “We determine that Mr. Bertonis and Mr. Garrett had at least the skill level of a POSITA at the time they submitted their declarations and testimony in this case. Ex. 1002 ¶¶ 4–15, Appx. A; Ex. 2001 ¶¶ 8–12, Appx. A; cf Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335 1341 (Fed. Cir. 2024) (“An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art.”). Accordingly, we see no reason to disregard the testimony of either on the basis that they do not have a POSITA’s skill level.” slip op. at 45

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “Because an assessment of whether the prior art discloses a means- plus-function limitation depends not only on the presence of the recited function but also the structure that performs that function as described in the patent’s specification, we address Petitioner’s undisputed contentions for the means-plus-function limitations below.” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We conclude that Petitioner has shown by preponderant evidence that Mirfakhraei is in the same field of endeavor as the ’518 patent, i.e., “broadband communication networks.” Mirfakhraei is thus analogous art because it is in the same field of endeavor as the ’518 patent.” slip op. at 27

  Patent outcomesUS 7,295,518 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,295,518
• Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentable
  PTAB · Sep 4, 2025 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–3, 6–10, 14–18, and 22–24 are unpatentable; claims 4–5, 11–13, and 19–21 are not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “We agree with Petitioner that the ’690 patent does not limit the term “probe” to channel assessment. Pet. Reply 2–4. Reviewing the intrinsic evidence, the “Technical Field” of the ’690 patent states that “some embodiments relate to channel assessment probes,” implying others do not. Ex. 1001, 1:13–14. The ’690 patent further states that “receiver determined probes may be used in a variety of applications” including to “discover hidden nodes” and “off-site network diagnosis.” Id. at 2:20–27. In addition, the ’690 patent states that probes may be used for “network maintenance procedures,” to “replicate a potential problem, reach or discover a distant or previously undetected node on the network, or assist with network admissions procedures.” Id. at 4:25–38. Turning to the claims of the ’690 patent, the evidence of record does not establish that the independent claims recite anything unique or specific to channel assessment (although their scope covers that purpose). Furthermore, dependent claim 7 of the ’690 patent recites that the “probe” is used to diagnose a network problem, and dependent claim 13 recites that the “probe” is used to identify a hidden node. Restricting the independent claims to probes used solely for channel assessment would be contradictory to these dependent claims. Littlefuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (construction of term in independent claims should not render dependent claims superfluous or lacking scope).” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “We agree with Petitioner that a “physical layer probe” is “a probe that relates to the physical layer.” The term does not appear per se in the specification of the ’960 patent, nor in the prosecution history, but only in claims 9, 17, and 19. However, the term “physical layer” is well-known and is the first layer in the Open Systems Interconnection (OSI) network model. See, e.g., Ex. 1021, 35–40, 69; Ex. 1002 ¶¶ 49–50. The physical layer is used to transmit digital bits over a network, and defines the timing, mechanical, and physical network characteristics required for transmitting the data bits. Hence, a “physical layer probe” is a probe that relates to the physical layer. We need not, and do not, construe the term further to resolve the parties’ dispute. See Realtime, Vivid Techs., supra. Having decided proper constructions for the disputed terms, we proceed in our analysis to consider the parties’ arguments concerning the challenge grounds. In the following sections, we apply the plain meaning of the claim terms, and as necessary, specify what the plain meanings are.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA8 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’690 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Hence, we determine that Petitioner has shown by preponderant evidence that the Ranging Request (“probe request”) message includes CID and SS MAC address and other parameters (“first plurality of parameters”) which at least specify the CID (“content payload of the probe”) and the SS MAC address (“second node”) of the Ranging Response.12 We thus proceed to consider Petitioner’s contentions for the remaining limitations of claim 1, which are undisputed, and determine that claim 1 is anticipated by IEEE-802.16.” slip op. at 29

  Patent outcomesUS 8,284,690 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,284,690
• Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentable
  PTAB · Aug 15, 2025 · IPR2024-00442 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–4, 9–13, and 18 are unpatentable as obvious; claims 5–8 and 14–17 were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “accepts” Petitioner’s proposed level of skill in the art “solely for purposes of responding to the Petition.” PO Resp. 11. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’826 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “In addition, Petitioner contends that the ’826 patent’s claims are not recited in means-plus-function form under § 112 ¶ 6. Pet. 25. Because the word “means” does not appear in the claims of the ’826 patent, there is a presumption that the claims do not recite means-plus-function limitations under § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Since neither party offers any argument or evidence to contravene this presumption, we do not construe any claim term as means-plus-function in rendering our decision.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Although Patent Owner argues that adding Konstaninos’s multi- channel functionality to Kamieniecki’s single-channel device would increase costs and complexity, Patent Owner overlooks that multi-channel functionality would also increase the STB’s capabilities. In any case, “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate a motivation to combine.” General Elec. Co. v. Raytheon Tech. Corp., 983 F.3d 1334, 1351 (Fed. Cir. 2020) (citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). Furthermore, Petitioner presents preponderant evidence that the market demand was such that customers would have desired an STB with multi-channel functionality even though it would cost more than a basic STB. Pet. Reply 6–8 (citing Ex. 1010 ¶¶ 1, 11, 16, 102–104; Ex. 1032 ¶¶ 5–6; Ex. 1033, 27:6–29:23; Ex. 2013 ¶¶ 70, 108). Konstantinos expressly teaches that the “evolving market for data and programming services will demand that receivers have the capability of multi-channel tuning.” Ex. 1010 ¶ 1. Petitioner has thus established that there was market demand that would have led a POSITA to improve Kamieniecki with Konstantinos’s multi-carrier capability. See KSR, 550 U.S. at 418 (“Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge of a [POSITA], all in order to determine whether there was an apparent reason to combine the known elements in the manner claimed by the patent at issue.” (emphasis added)). Moreover, we agree with Petitioner that Konstantinos addresses the cost and complexity issues that Patent Owner asserts are problematic. Pet. 35–36; Pet. Reply 8–9 (citing Ex. 1010 ¶¶ 102, 105–106). For example, Konstantinos teaches that breaking up the original signal into smaller subsignals decreases the required sampling rate for each band since interleaved lower-rate samplers can be used, which reduces power consumption and interference, and enables conventional digital channel selection methods to be used for fine selection of one channel from a band of channels. Ex. 1010 ¶¶ 102, 104105. In addition, Konstantinos teaches reducing cost and complexity through a single chip solution. Ex. 1002 ¶ 150; Ex. 1010 ¶ 44. Hence, we do not see the cost or complexity issues that Patent Owner mentions as barriers that would have prevented a POSITA from making the combination. Similarly unavailing is Patent Owner’s stance that Kamieniecki is satisfactory for the applications for which it is designed such that a POSITA would not seek to improve it with Konstantinos. PO Sur-Reply 8–11. Konstantinos recognizes the market demand for multi-channel functionality, so adding this capability to Kamieniecki’s single-channel device would have been a natural thing for the POSITA to pursue in light of the advantages afforded thereby. Ex. 1010 ¶ 1; KSR, 550 U.S. at 420 (“any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”).” slip op. at 17

  Patent outcomesUS 9,825,826 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,825,826
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under §103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable as obvious; claims 1–21 were not shown unpatentable because the asserted combinations did not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “attempts to extrapolate Mahajan’s specific teachings and specific architecture into a general principle such that specific commands are converted to universal commands and then universal commands are converted to specific commands regardless of the location of the process within a distributed system. See Tr. 14:5–11. Rather, we agree with Patent Owner that Petitioner’s extrapolation arguments are unsupported by Mahajan. We understand Petitioner argues that Mahajan’s “distributed computing environments” would have rendered it obvious to alter the location where command conversions occur. Pet. 41; Reply 10–11, 14. Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain” slip op. at 24

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-00322 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under § 103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26

  Patent outcomesUS 9,427,662 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jan 16, 2025 · IPR2023-01027 · APJ Aaron W Moore · IPR · Final written decision

  Claims 37–70 are unpatentable: claims 37–41, 47, 50–56, 58–59, 60–62, 64–65, and 70 as anticipated by Alden; the remaining challenged claims as obvious over Alden and the listed combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). 3 PCT Patent App. Pub. No. WO 01/70538 A2 (Exhibit 1010). 4 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 5 U.S. Patent No. 4,970,628 (Exhibit 1007). 6 U.S. Patent No. 6,144,158 (Exhibit 1008). 7 U.S Patent No. 6,049,749 (Exhibit 1009). 8 PCT Patent App. Pub. No. WO 02/04247 A1 (Exhibit 1011). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (PO Resp. 4), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Claim Construction We construe claims using the standard that would be applied in a civil action under 35 U.S.C. § 282(b), giving terms their ordinary and customary meaning to one of ordinary skill in the art in view of the specification and prosecution history. See 37 C.F.R. § 42.100(b). The Petition asserts that all claim terms should be given their “ordinary and customary meaning.” See Pet. 8. Patent Owner also proposes that the claim terms be given their ordinary meaning, and identifies the “ordinary meaning” for the terms “identify,” “turn,” and “curve,” which we discuss in our analysis below. We otherwise find that that no express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

  Patent outcomesUS 10,894,503 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,894,503

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.