- Merck Sharp & Dohme LLC v. The Johns Hopkins UniversityAll claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00240 · APJ Deborah Katz · IPR · Final written decision
Claims 1–42 are unpatentable: claims 1–42 are anticipated by the MSR, and the Board also finds the challenged claims obvious over the MSR and cited combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“claims a method of treating a human patient with colorectal cancer having certain characteristics using pembrolizumab and the main prior art reference cited by Petitioner discloses testing pembrolizumab to treat human patients. (See Ex. 1001, 25:40–50, Ex. 1005; see Decision 8–9.) Accordingly, the relevant field of Patent Owner’s claims is treating human patients, as well as testing existing compounds. Neither party directs us to evidence of the level of skill in the art beyond what we considered for institution of trial. In the Decision to institute trial, we determined that the level of skill in the art relevant to the claims of the ’393 patent is not limited to knowledge of and experience with conducting research relating to oncology or developing and conducting clinical trials. (See Dec. 8–9.) We determined that the level of skill also includes knowledge of and experience with treating colorectal cancer patients with immunotherapy compounds, identifying the conditions these patients may have, and understanding the literature regarding clinical trials for such colorectal cancers and the associated conditions and immunotherapy. (See id.) Because the parties do not present additional evidence or argument, we maintain that determination.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“what one of ordinary skill in the art would have known and understood at the relevant time. Specifically, Petitioner relies on the testimony of Alfred L. Neugut, M.D., Ph.D., M.P.H.3 (Ex. 1003) and Paul E. Oberstein, M.D. (Ex. 1150). Patent Owner relies on the testimony of Nils Lonberg, Ph.D. (Ex. 2001) and Richard Goldberg, M.D. (Ex. 2090).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1 requires a causal relationship wherein the patient must be tested for MSI-H and, if he or she is determined to be MSI-H or dMMR, then the patient is treated with 10 mg/kg of pembrolizumab every 14 days. We further agree that this relationship is different than the use of the term “after” in claims 7, 20, and 27, wherein patients must be treated with a different cancer therapy, and wherein the cancer must have later progressed for the treatment to be within the scope of these claims. (Ex. 1001, 25:66–7, 26:44–46, 26:63–64.) In claim 1, a biological sample from the patient must be tested to determine if the cancer is MSI-H and, if so, the patient is treated with a therapeutically effective amount of pembrolizumab. For this reason, if the prior art teaches the limitations of 1) testing a biological sample obtained from a patient having colorectal cancer to determine that the patient’s colorectal cancer is microsatellite instability high or mismatch repair deficient, and 2) treating the patient with a therapeutically effective amount of pembrolizumab if the patient’s colorectal cancer is determined to be microsatellite instability high or DNA mismatch repair deficient, the art anticipates claim 1. We are not persuaded that claim 1 requires or excludes anything else because nothing else is recited in the claim.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Microsatellite Unstable (MSI) Tumors.” (Ex. 1005, 2.) The parties’ witnesses agree that MK-3475 is pembrolizumab, the compound recited in claim 1. (See Neugut Decl., Ex. 1003 ¶ 37; see Lonberg Decl., Ex. 2001, ¶ 65.) Patent Owner does not dispute Petitioner’s assertion that the MSR was published on a government web site on June 10, 2013, more than two years before the priority date of the ’393 patent on July 10, 2015. (See Pet. 7 (citing Ex. 1005, 3, Ex. 1003 ¶ 35).)” slip op. at 17
Patent outcomesUS 11,591,393 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,591,393 - PTAB · May 21, 2025 · IPR2025-00193 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, or 30 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’030 patent is unpatentable.” slip op. at 2
- BurdenNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not argue that any claim term requires construction. Pet. 22–23. Likewise, Patent Owner takes the position that “no claim terms 2 Person of ordinary skill in the art. require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 19. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,761,030 - PTAB · May 21, 2025 · IPR2025-00192 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 17, 20, 23, 28, or 29 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’138 patent is unpatentable.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 5, 17, 20, 23, 28, and 29 would have been obvious over Cantor. slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,549,138 - SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution deniedPTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,798,967 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00699 · APJ St John Courtenay III · IPR · Final written decision
Claims 1, 2, 6–11, and 14–18 are unpatentable under § 103; claims 3–5, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). In its Preliminary Response Patent Owner indicated it “adopts Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. We note Patent Owner does not dispute or otherwise disavow Petitioner’s definition of a POSITA in its Response or Sur-reply. See generally PO Resp.; PO Surreply. level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner. Id. We see nothing in the preamble 1.0, or “receiving” step 1.1.1, or “wherein” clause 1.1.2 that defines a data format prior to organizing step 1.2.1, and we decline to read limitations from the specification into the claim, i.e., a “pre-defined format” being defined prior to organizing step 1.2.1, as argued by Patent Owner. 5 PO Resp. 20. Preamble 1.0 is silent regarding any mention of a data format: “A method of providing content for a television (TV), the method comprising: . . . .” Although step 1.1.1 requires “receiving, by a processor, data relevant to one or more scheduled events from one of a corresponding subservice of a plurality of subservices,” at best this merely requires a type of data that is “relevant to one or more scheduled events” and does not require a particular data format to be used for “data relevant to one or more scheduled events,” nor the “pre-defined” format argued by Patent Owner. PO Resp. 20–21. (emphases added). Nor do we read step 1.1.2 as defining a particular data format used by the three recited types of subservices: “[1.1.2] wherein the plurality of subservices comprises a video-on-demand (VOD) subservice, electronic programming guide (EPG) subservice, and a media subservice.” 5 We emphasize that patentability is based upon the claims. “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). according to a pre-defined format corresponding to each of the plurality of subservices.” (emphases added). However, we find Patent Owner’s contention unavailing that the term “pre-defined format” recited in step 1.2.1 requires three different data model pre-defined formats because claim 1 is silent regarding the argued term “different.” See PO Sur-reply 9 (regarding Patent Owner’s response to the question of “whether element [1.2.1] and the term ‘pre-defined format’ requires three different data models.” Patent Owner responds: “For the above reasons, they do.”). Moreover, we note the term “data model” is not introduced until subsequent “wherein” clause 1.2.2, which merely requires that “the predefined format comprises one of a VOD data model, an EPG data model and a media data model.” (emphasis added).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regarding the claim 1 term “uniform format” Petitioner replies that Patent Owner “does not dispute that the prior art teaches a ‘uniform format’” in step 1.2.4. Pet. Reply 8 (citing generally PO Resp.). Therefore, Petitioner argues “for the purposes of this proceeding, the term “uniform format” does not require express construction.” Pet. Reply 8 (citing Nidec (Fed. Cir. 2017)). Nevertheless, at the Board’s request (Dec. 29), Petitioner proceeds to address the scope of the claim 1 term “uniform format.” Pet. Reply 8. Petitioner notes that the ’805 patent uses the term “uniform format” in column 33: “The data models provide uniform formats for the respective subservices (i.e., VOD subservice 1420, EPG subservice 1424, and media subservice 1428) and/or the internal content provider modules 1416 which interface with applications 416.” Pet. Reply 8 (quoting Ex.1001, 33:25–30). Petitioner further notes that Dr. Lippmann explains, “the ’805 patent does not appear to ascribe any specific meaning to the term ‘uniform format’ and the passage does not limit the scope of this term to require a plurality of uniform formats.” Pet. Reply (quoting Ex. 1020 ¶ 13).” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Patent Owner’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., (125 F.4th 1120, 1132 (Fed. Cir. 2025)) held that Title 35 U.S.C. sections “311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” (emphasis added). Accordingly, we conclude both Melnychenko and Choi are prior art for the purpose of this IPR pursuant to 35 U.S.C. § 311(b) under the holding of Lynk Labs.” slip op. at 6
Patent outcomesUS 10,419,805 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,419,805 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00354 · APJ St John Courtenay III · IPR · Final written decision
Claims 1, 2, 6–11, and 14–18 are unpatentable as obvious; claims 3–5, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Patent Owner’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., (125 F.4th 1120, 1132 (Fed. Cir. 2025)) held that Title 35 U.S.C. sections “311(b) and 102(e)(1) permit IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” (emphasis added). Accordingly, we conclude both Melnychenko and Choi are prior art for the purpose of this IPR pursuant to 35 U.S.C. § 311(b) under the holding of Lynk Labs.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Relying upon the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). In its Preliminary Response Patent Owner indicated it “adopts Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. We note Patent Owner does not dispute or otherwise disavow Petitioner’s definition of a POSITA in its Response or Sur-reply. See generally PO Resp.; PO Surreply. level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner. Id. We see nothing in the preamble 1.0, or “receiving” step 1.1.1, or “wherein” clause 1.1.2 that defines a data format prior to organizing step 1.2.1, and we decline to read limitations from the specification into the claim, i.e., a “pre-defined format” being defined prior to organizing step 1.2.1, as argued by Patent Owner. 5 PO Resp. 20. Preamble 1.0 is silent regarding any mention of a data format: “A method of providing content for a television (TV), the method comprising: . . . .” Although step 1.1.1 requires “receiving, by a processor, data relevant to one or more scheduled events from one of a corresponding subservice of a plurality of subservices,” at best this merely requires a type of data that is “relevant to one or more scheduled events” and does not require a particular data format to be used for “data relevant to one or more scheduled events,” nor the “pre-defined” format argued by Patent Owner. PO Resp. 20–21. (emphases added). Nor do we read step 1.1.2 as defining a particular data format used by the three recited types of subservices: “[1.1.2] wherein the plurality of subservices comprises a video-on-demand (VOD) subservice, electronic programming guide (EPG) subservice, and a media subservice.” 5 We emphasize that patentability is based upon the claims. “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). according to a pre-defined format corresponding to each of the plurality of subservices.” (emphases added). However, we find Patent Owner’s contention unavailing that the term “pre-defined format” recited in step 1.2.1 requires three different data model pre-defined formats because claim 1 is silent regarding the argued term “different.” See PO Sur-reply 9 (regarding Patent Owner’s response to the question of “whether element [1.2.1] and the term ‘pre-defined format’ requires three different data models.” Patent Owner responds: “For the above reasons, they do.”). Moreover, we note the term “data model” is not introduced until subsequent “wherein” clause 1.2.2, which merely requires that “the predefined format comprises one of a VOD data model, an EPG data model and a media data model.” (emphasis added).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regarding the claim 1 term “uniform format” Petitioner replies that Patent Owner “does not dispute that the prior art teaches a ‘uniform format’” in step 1.2.4. Pet. Reply 8 (citing generally PO Resp.). Therefore, Petitioner argues “for the purposes of this proceeding, the term “uniform format” does not require express construction.” Pet. Reply 8 (citing Nidec (Fed. Cir. 2017)). Nevertheless, at the Board’s request (Dec. 29), Petitioner proceeds to address the scope of the claim 1 term “uniform format.” Pet. Reply 8. Petitioner notes that the ’805 patent uses the term “uniform format” in column 33: “The data models provide uniform formats for the respective subservices (i.e., VOD subservice 1420, EPG subservice 1424, and media subservice 1428) and/or the internal content provider modules 1416 which interface with applications 416.” Pet. Reply 8 (quoting Ex.1001, 33:25–30). Petitioner further notes that Dr. Lippmann explains, “the ’805 patent does not appear to ascribe any specific meaning to the term ‘uniform format’ and the passage does not limit the scope of this term to require a plurality of uniform formats.” Pet. Reply (quoting Ex. 1020 ¶ 13). In its Sur-reply, Patent Owner notes that “Petitioners do not appear to” slip op. at 22
Patent outcomesUS 10,419,805 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,419,805 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00351 · APJ Robert L Kinder · IPR · Final written decision
Claims 1, 4–6, 11, 14–16, 21, and 22 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“6. Whether Choi and Kim Are Printed Publications Pursuant to 35 U.S.C. § 311(b) Multimedia contends that Choi and Kim are not printed publications under 35 U.S.C. § 311(b) because they were not published before the ’040 patent’s priority date of August 17, 2012. PO Resp. 13–14. Multimedia referenced a case pending at the Federal Circuit, Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., as pertinent to addressing whether applications for patent published after the priority date of the challenged patent are permissible “printed publications” in IPRs. Id. Multimedia’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., clarified that inter partes review challenges may be based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. 125 F.4th 1120, 1127 (Fed. Cir. 2025). As such, both Choi and Kim are prior art pursuant to 35 U.S.C. § 311(b).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the final record before us, we determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Lippman, LG argues the following: [a] Person of Ordinary Skill in The Art . . . in August of 2012 would have been someone knowledgeable and familiar with the interactive media guide arts that are pertinent to the ’040 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 8–9 (citing Ex. 1003 ¶¶ 18–20). In its Response, “Patent Owner accepts the Petitioner’s definition of the POSITA” and Multimedia and its expert, Dr. Surati, “find that definition to be reasonable.” PO Resp. 7 (citing Ex. 2011 ¶¶ 43, 44). Accordingly, we adopt LG’s assessment of the level of skill in the art because it is consistent with the ’040 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Based on the final record, including the parties’ contention that no claim term requires express construction, there is no readily discernible controversy between the parties that requires us to construe any claim terms, and thus we do not construe any claim terms except as discussed below with respect to limitation 1.6. 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 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“highlighted when a user selects this content source in some manner. Ex. 1001, 30:27–51. At that juncture, after a user selects the content source and it is highlighted, the content source is then associated with the first content information, “801 – CNXN,” which is displayed on the right panel of Figure 15B. See id. We do not understand the ’040 patent as requiring the display “801 – CNXN” to cause the corresponding highlighting of Live TV 1504A as suggested by Multimedia. The claim language requires the two elements “being associated with”5 one another, but it does not require that one element’s display (first content information) causes the highlighting of the other element (content source). Our view is supported by the only description of highlighting a content source found in the specification of the ’040 patent. In regard to Figure 15B, the specification describes that “global panel 1404 may include one or more sources represented by icons and text, or shortcuts, 1504A-E.” Ex. 1001, 30:27–28. The specification describes how highlighting the source is user directed: Global panel 1404 may additionally indicate a source that is selected or highlight [sic] using indicator 1512; for example, indicator 1512 may comprise a box positioned around Live TV 5 As the Federal Circuit has explained, “the plain meaning of associating relates to a mere commonality.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1306 (Fed. Cir. 2014), overruled by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (on unrelated grounds). 801 CNXN. Although illustrated as a box, other methods or configurations which provide for icon selection and/or identification may be used. For example, instead of a box, indicator 1512 may comprise adjusting the background of an icon and text, such as 1504A for example, such that the color, shade, or hue is different. Id. at 30:41–49 (emphasis added). Highlighting, as the specification describes, occurs when a user selects a source using indicator 1512 and that source is boxed or differentiated by color or shading. Id. The specification, in relation to Figure 15C, further describes a user moving indicator 1512 to another source such that the “the content or a preview of the content may be displayed in active content area 1408.” Id. at 32:9–17 (“For example, FIG. 15C illustrates an image or video associated with Skyfalls being displayed in content area 1408.”). Thus, the specification is clear that the highlighting function results from user selection of the source and the corresponding association of the first content information with that source flows from that user selection. See also id. at 2:30–31 (describing a purpose of the ’040 patent as “an Intelligent TV with intuitive user interfaces and with seamless user interaction capability”), 32:35–43 (“[t]he user . . . move[s] the focus box”). This supports our understanding that the claim language does not require that the display of first content to cause the highlighting of a displayed source identifier.” slip op. at 29
Patent outcomesUS 9,510,040 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,510,040 - Aardevo North America, LLC v. Agventure B.V.Institution deniedPTAB · May 1, 2025 · IPR2025-00136 · APJ Jeffrey N Fredman · IPR · Institution
Institution of inter partes review was denied for claims 1–10 because Petitioner did not establish a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that it has a reasonable likelihood that it would prevail on these obviousness grounds. XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5. XIII. CONCLUSION After reviewing the information presented in the Petition and the Preliminary Response, we determine that, based on the evidence of record, Petitioner has not established a reasonable likelihood that claims 1–10 of the ’841 patent are unpatentable. XIV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), institution of an inter partes review of all challenged claims on all grounds presented in the Petition is denied.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“However, neither Petitioner nor Dr. Jansky provide specific data on the record before us showing the actual measured homozygosity of either of the inbred lines, US-W 5309 and US-W 5315. And Phumichai experimentally demonstrates that Dr. Jansky’s assumption that theoretical heterozygosity reduction of 50% per generation is not necessarily accurate, stating the “observed average percentage of reduction of heterozygosity per generation (38.4% or 38.5%) was lower than the theoretically expected value of 50%.” Ex. 1005, 982. Indeed, Phumichai disclosed that the “SOPH [Section-based observed percentage of heterozygosity] decreased steadily from the original 100% in 99H2–1 (S0) to the family means of 62.4% in 3H2 (S1), 37.9% in 3H3 (S2).” Id. at 981. That is, Phumichai experimentally shows that in an S2 generation of a potato line, the heterozygosity was 37.9%, resulting in homozygosity of about 62.1%, below the 75% theoretically expected and the 75% required by claim 1 of the ’841 patent. Therefore, the evidence of record does not show that the S2 generation of potato lines in Jong necessarily satisfies the homozygosity recitation in claim 1 of the ’841 patent, and so cannot establish on the record before us that Jong inherently teaches this limitation.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentableNot shown unpatentable
“Owner is telling. Petitioner does not refute Patent Owner’s evidence of objective indicia. On the current record, the objective indicia evidence is compelling. As to long felt need, Patent Owner cited evidence on record before the Examiner that showed a persistent need recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). For example, Dr. Huang states “This research is the breakthrough we have been waiting for since nearly a century . . . This is crucial for the potato breeding worldwide.” Ex. 2009, 687. There is no evidence that this long-felt need was satisfied by another before Appellant’s invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Lastly, Dr. Lindhout explains that this invention satisfies the long-felt need, stating “I have discovered, and disclosed in the present application for patent, how a fertile homozygote in” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,140,841 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentablePTAB · Apr 29, 2025 · IPR2024-00696 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–14 were not shown unpatentable under any of four §103 grounds because the cited combinations did not teach the claimed content-dependent first panel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added).” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Patent Owner thus correctly concludes that “[o]ptions region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 53
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based upon our review of the complete record, we credit Dr. Surati’s testimony that the information in Woods’ options region 1020 (i.e., the first content panel as mapped by Petitioner (Pet. 43; Pet. Reply 16–17)), is determined independently of any currently displayed program content, and what is displayed (e.g., the cast of “Heroes” as depicted in Figure 10) is in fact based on the selected program listing, which does not teach or suggest 1.5.1 (nor recitation 1.5.2 “wherein the first content panel is a first type of application panel”). Ex. 2011 ¶ 143. We find persuasive Dr. Surati’s testimony that “a POSITA would readily understand that the information displayed [in Woods’] region 1020 [of Figure 10] is based on the selected program listing (e.g., Heroes 912) made by the user in Figure 9, not the currently-displayed content in media region 1030 of Figure 10.” Id. (emphases added). In support, Dr. Surati further testifies that “[i]n fact, region 1020 of Figure 10 presents information about the selected program listing for Heroes and is not based on the Mercedes advertisement displayed in media region 1030.” Id.; see also id. at ¶ 144 (depicting Ex. 1005, Fig. 10 above paragraph 144) (emphasis added).” slip op. at 37
Patent outcomesUS 9,247,174 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,247,174 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentablePTAB · Apr 29, 2025 · IPR2024-00352 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–14 were not shown unpatentable because Woods, alone or combined with Istvan and/or Machida, did not teach the claimed content panel based on currently displayed content.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’174 patent “would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18–20). Patent Owner indicates it “accepts the Petitioner’s definition of the POSITA.” PO Resp. 9–10. Based on the final record before us, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the final record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’174 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added). We emphasize that we are not reading a “dependency” from the ’174 patent specification into the claim. Rather, we conclude a temporal antecedent basis under the plain language of the claim for step 1.5.1 and “wherein” clause 1.5.2.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“But Patent Owner disagrees: A POSITA would readily understand that the two user operation panels of Machida are for playback/navigation of content presented in the content display area. The operation panels are very distinct from the function options menu 1020 of Woods’ Figure 10 that the Petitioner alleges to be the claimed “first content panel” (when displaying “cast information” for a selected program listing like Heroes) and the claimed “second content panel” (when displaying “detailed information” for the same selected program listing). PO Resp. 67–68 (citing Ex. 1011 ¶ 250). Patent Owner additionally argues that a “POSITA would not modify Woods’ options region 1020 displaying ‘cast information’ with either of Machida’s operational panels for playback of content.” PO Resp. 68. In support, Patent Owner emphasizes that “Woods’ options region 1020 displaying ‘cast information’ does not perform playback of content displayed in media region 1030. Likewise, Woods’ options region 1020 displaying ‘detailed information’ about a selected program listing does not perform playback of content displayed in media region 1030.” PO Resp. proposed combination.” PO Resp. 69 (citing Ex. 2011 ¶ 252). We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 52
Patent outcomesUS 9,247,174 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,247,174
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.