- Meta Platforms, Inc. v. Sterling Computers CorporationAll claims unpatentablePTAB · Aug 3, 2026 · IPR2025-00430 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–3, 5–9, 13–15, 18, 19, and 22 are unpatentable as obvious over Dumais, Rose, and Rose with Bieganski.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Our Institution Decision adopted Petitioner’s definition of a person of ordinary skill in the art. Inst. Dec. 7–8. In its Response, Patent Owner adopts Petitioner’s proposed level of ordinary skill. See PO Resp. 13–14 (“Patent Owner and its expert adopt the Board’s definition for purposes of this Response”). Having considered the record, we continue to adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’217 Patent. Accord Inst. Dec. 7–8.” slip op. at 8
- ExcludeMotion to exclude, deniedOther
“We have not considered any of the evidence Patent Owner moves to exclude in reaching our findings and conclusions set for in this Decision. As a result, Patent Owner’s Motion to Exclude this evidence is dismissed as moot.” slip op. at 55
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“We determine that Patent Owner has not carried its temporary burden of production to support its contention that the inventors were reasonably diligent throughout the critical period. See Parus Holdings, 70 F.4th at specifically cite the relevant record evidence combined with an explanation of the significance of the produced material in briefs. See id. at 1372 (explaining that “[t]he burden of production cannot be met without some combination of citing the relevant record evidence with specificity and explaining the significance of the produced material in briefs”). Patent Owner states that it “submitted extensive evidence.” PO Sur-reply 14. But simply submitting dozens of exhibits is not enough. As our reviewing court has admonished, the “burden of production cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.” See Parus Holdings, 70 F.4th at 1371. Instead of citing what specific portions of those exhibits are relevant and why, Patent Owner cites entire exhibits and asserts, without analysis or explanation, that they show diligence. See PO Resp. 49– 50 (citing numerous exhibits without pinpoint citations). Patent Owner’s Sur-reply asserts that Patent Owner’s Response was adequate (PO Sur-reply 17), but an examination of the Response shows that it was not. For example, in its Response, Patent Owner states “numerous documents corroborating [the inventors’] testimony that, during the critical period, they were refining the formulas to implement the BlueSpace relevance model” by citing the entirety of so-called “corroborating documentation” spanning Exhibits 2032 through 2074 as well as the entirety of Justin Marston’s Second Supplemental Declaration (Ex. 2030) and Paul Marston’s Declaration (Ex. 2031). See PO Resp. 49. However, there is not a single pinpoint citation to any particular paragraph, page, or entry for any of those exhibits (a number of which approach 100 pages in length) in Patent Owner’s discussion. See id. Even less helpful, the Response does not inventors actually worked on the claimed invention. See id. That is, the Response does not state exactly what in the “corroborating documentation” actually corroborates the inventors’ testimony or itself shows diligence. If anything, the Response points out that the inventors were engaged in other activities: “Justin Marston had numerous other obligations running the company BlueSpace, and Paul Marston was working a full-time position as a lecturer on statistics.” PO Resp. 49; PO Sur-reply 15–16. We do not fault the Marstons for engaging in other activities, but Patent Owner’s discussion of the Marstons’ other activities and mere conclusory assertions of diligence, without more, do not show that the Marstons were reasonably diligent as to the relevant activities during the critical time period. Simply put, Patent Owner’s Response does not adequately explain exactly how or why the evidence supports its argument that the inventors were reasonably diligent throughout the critical period. We decline the invitation to sift through the hundreds of pages spanning dozens of exhibits in search of evidence and reasons supporting Patent Owner’s assertion of diligence.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combined Rose and Bieganski. Rose and Bieganski are both concerned with recommending content to a user based on other users’ content preferences. Ex. 1006, code (57); Ex. 1007, code (57). Petitioner, supported by Dr. Fox, adequately shows that Bieganski discloses an improved technique for selecting which other users’ preferences are considered in a recommendation. Pet. 71 (citing Ex. 1003 ¶¶ 235–236), 75 (citing Ex. 1003 ¶¶ 247–248). We agree that improving Rose’s content ranking system using Bieganski’s content recommendation technique sufficiently motivates the combination. See KSR Int’l, 550 U.S. 417 (noting that where “a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”). Patent Owner’s argument that Bieganski’s approach is not an improvement over Rose because Rose “teach[es] that feedback from all users is valuable” (PO Sur-reply 9–10 (citing Ex. 2029 ¶ 199)) has two faults. First, that argument mischaracterizes Rose. We find no description in Rose which states that feedback from all users is “valuable” such that selecting certain users is not an improvement. Rather, Rose aligns with Bieganski’s selection of relevant users because Rose emphasizes feedback from similar users by adjusting the weight given to feedback from users who are more or less correlated. Ex. 1006, 6:64–7:1, 7:10–34 (“Rjk is the correlation of users i and k, the Vkj is the weight indicating the feedback of user k on document j.”). Second, even if Rose describes an embodiment where feedback from all users is considered, that does not preclude motivating improvement. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (noting it is not necessary to show that a combination is “the best option, only that it be a suitable option”).” slip op. at 47
Patent outcomesUS 7,716,217 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,716,217 - PTAB · Aug 13, 2025 · IPR2025-00430 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5–9, 13–15, 18, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Rose.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion as to Claim 1 For the reasons discussed above, and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that Petitioner shows a reasonable likelihood of prevailing in demonstrating that claim 1 would have been obvious over Rose. 3. Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Rose, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review”); 37 C.F.R. § 42.108(a).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed level of skill. Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition.” slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– 21. Moreover, the claims recite that the modules are stored in a computerreadable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - PTAB · Jun 10, 2025 · IPR2025-00299 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Kircher and Krug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this 6 The current record does not include allegations or evidence of objective indicia of nonobviousness. proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). However, the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Although the specification broadly defines “module,” the language of the claims better supports Patent Owner’s argument that the computer program module limitations connote structure in the form of software instructions or code. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 22–24; Ex. 2003 ¶¶ 15–28). Specifically, claim 1 recites a computer-readable storage medium storing computer program modules configured to execute on the computer processor, the computer program modules comprising. . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Ex. 1001, 47:30–32. And, claim 6 recites the computer-program product having a computer-readable storage medium having computer program instructions encoded thereon comprising . . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– readable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“That is, Petitioner asserts that the claim requires only one of “a local importance,” “a global importance,” “a content relevance,” or “one or more actions on the piece of electronic content.” Id. We adopt Petitioner’s construction, which Patent Owner does not dispute at this stage in the proceeding. See Prelim. Resp. The claimed determination is “based at least in part on one or more measures derived from the group” members listed. As such, the claim language is clear that only one member of the group, i.e., one of limitations 1[g][i]–1[g][iv], is required to meet the claim. Independent claims 6 and 7 recite similar limitations as claim 1, and for purposes of institution, we adopt Petitioner’s claim construction for those similar limitations. See Ex. 1001, 48:35–46, 49:1–11.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - PTAB · Apr 7, 2025 · IPR2024-01361 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–16 and all petition grounds after finding a reasonable likelihood that claims 1, 2, and 9–12 are unpatentable over Kiani and Pelio.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’261 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Rosing, Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, including the use of renewable energy in powering datacenters, workload distribution amongst geographically distributed datacenters, and power management techniques for datacenters.” Pet. 15 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 15. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. For purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden at the institution stage “to identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). We determine that, at this point in the case and for purposes of institution, and based on the totality of the evidence to date, Petitioner has submitted sufficient evidence to establish a reasonable likelihood that Kiani was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In particular, the face of Kiani bears a copyright date of 2017, a publication date of May 2017, and a volume number in which it was published in an established journal (IEEE Communications Magazine). Ex. 1005; see also Hulu at 19 (noting that Petitioner had met its burden sufficiently for institution by submitting a copy of a reference that bore “a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94,” and was part of “a textbook from an established publisher . . . and a well-known book series”).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,283,261 - Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. 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 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - Zebra Technologies Corporation v. Intellectual Ventures I LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-00883 · APJ Larry J Hume · IPR · Institution
The Board denied institution because Zebra did not show Dammann was a publicly accessible printed publication, so it was unavailable as prior art for either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“presented. For the reasons explained above, including Patent Owner’s arguments, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the subject matter of claims 1, 3, 7–10, 13, 14, and 16 would have been obvious over Dammann and Hervin in view of the knowledge of a person of ordinary skill in the art. We reach this conclusion because, under our case law discussed above, we conclude that Petitioner has not sufficiently shown that Dammann is a printed publication. Accordingly, Dammann is not available in this proceeding as prior art to the claims of the ʼ439 patent. Because all of” slip op. at 32
- Obviousness (§103) › Analogous artNot reached
“b) Hervin’s Status as Analogous Art Patent Owner contends the Petition fails to show that Hervin is analogous art. Prelim. Resp. 38–40. The Petition does not address whether Hervin is analogous art to the invention claimed in the ʼ439 patent. See generally Pet. For purposes of our decision declining to institute trial, we need not reach a determination as to whether Hervin is analogous art to the claimed invention. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency “is at perfect liberty” to reach a decision based on a “single dispositive issue”); Bos. Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need not address issues that are not necessary to the resolution of the proceeding”).” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,623,439 - Elmos Semiconductor SE v. Texas Instruments IncorporatedInstitution deniedPTAB · Nov 5, 2024 · IPR2024-00802 · APJ Bach V Hoang · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any of claims 1–20 would be unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that “a person having ordinary skill in the art (‘POSITA’) at the relevant time, would have had at least a bachelor’s degree in electrical engineering, or equivalent experience of at least two years working in the field of the design electrical driver systems for Light Emitting Diodes (LEDs).” Pet. 20. Patent Owner has not addressed the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as articulated above. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ432 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner’s constructions do not affect our determinations, and, even under Petitioner’s constructions, Petitioner fails to show a reasonable likelihood of success with respect to its proposed grounds of unpatentability for the challenged claims of the ’432 Patent.” slip op. at 10
- BurdenNot shown unpatentable
“First, even under Petitioner’s assertion that “controller RG . . . performs the functions of an error amplifier and amplifier output stage” (id. at 37), Petitioner has not adequately shown that controller RG meets all three of “an error amplifier,” “a control voltage,” and “an amplifier output stage.” Petitioner’s assertions that those elements are “interior to” or “include[d]” in controller RG are conclusory and unsupported. Petitioner summarizes and reproduces portions of Sudhaus regarding the output currents of controller RG, but has not explained the relevance of its summary and reproduction with respect to each recited claim element. See id. at 37–38 (citing Ex. 1005, 2:32–33, 4:25–28, 4:46–50, 8:47–55), 40– 41. Nor has Petitioner explained why or how the summarized or reproduced portions of Sudhaus show that those claim elements are interior or included in controller RG. See id. Further, Petitioner also fails to show how Sudhaus teaches the claimed interactions and relations between the error amplifier, control voltage, and amplifier output stage. The claim recites the error amplifier compares voltages to “generate a control voltage” and the amplifier output stage controls output current “based on the control voltage.” Petitioner has not explained what specific signal controller RG generates that teaches a “control voltage” used to control output current. Nor has Petitioner stated, let alone explained how, controller RG generates a control voltage in the claimed manner and controls output current based on that control voltage. Simply because controller RG produces outputs that are allegedly similar to the claimed outputs does not by itself show that controller RG produces the claimed outputs using the claimed elements in the claimed manner.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 11,653,432 - PTAB · Sep 13, 2024 · IPR2024-00619 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR of claims 1–8 on all asserted grounds; the Board found compelling evidence that claims 1 and 6 would have been obvious over Yu and Acharya.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5, overall, favors exercising our discretion to deny institution of an inter partes review. The sixth Fintiv factor takes into account other circumstances that may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, if we determine that the other Fintiv factors favor discretionary denial, as we do here, we must also consider whether the Petition presents compelling merits. CommScope, Paper 23 at 5. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. Accordingly, we first discuss the merits of the Petition. We then discuss our conclusion that the merits are compelling.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review.” slip op. at 2
- BurdenOther
“we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“application on April 11, 2013. Ex. 1004, codes (22), (43). The ’383 patent issued on August 7, 2018, and the earliest claimed priority date for the ’383 patent is March 28, 2013. Ex. 1001, codes (45), (63), (30). Thus, Acharya qualifies as prior art under § 102(a)(2) because it was filed on October 5, 2011, and thus was “effectively filed before the effective filing date” of the ’383 patent. Despite the Petitioner’s citation to the wrong sub-part of section 102, we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,045,383 - Obm, Inc. / Cholla Energy LLC v. Lancium LLCInstitution deniedPTAB · Mar 13, 2024 · IPR2023-01407 · APJ Amber L Hagy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’433 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes an alternative definition, asserting that a person of ordinary skill in the art “at the time of the claimed invention would have had a degree in mechanical engineering, electrical engineering, or a similar field with at least 1–2 years of experience with power control systems or other comparable professional experience.” Prelim. Resp. 26 (citing Ex. 2001 ¶ 32). Patent Owner disagrees with Petitioner’s proposed definition because “the Challenged Claims pertain to power control systems instead of ‘power generation systems,’ as asserted in the Petition.” Id. at 25 (citing Pet. 11). Based on the present record including the disclosure in the ʼ433 patent, we apply Petitioner’s definition of the level of ordinary skill in the art. See Pet. 11. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ433 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). We also note that our decision herein would be the same under either party’s proposed definition.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“’433 patent in Bearbox LLC v. Lancium LLC, 1:21-cv-00534-GBW-CJB (D. Del.). Pet. 11. In particular, the district court construed “power option agreement” as follows: an agreement between a power entity associated with the delivery of power to a load and the load, wherein the load provides the power entity with the option to reduce the amount of power delivered to the load up to an agreed amount of power during an agreed upon time interval such that the load must use at least the amount of power subject to the option during the time interval unless the power entity exercises the option. See id. (quoting Ex. 1008, 1). The district court also construed “minimum power threshold” as “a minimum amount of power a load must use during an associated time interval.” Id. (quoting Ex. 1008, 1). Petitioner states that “[f]or this proceeding only, Petitioner[] do[es] not contest these constructions.” Id. Patent Owner also states that it does not contest these constructions at this stage. Prelim. Resp. 26. For purposes of this decision, we adopt these constructions. We otherwise determine that no explicit construction of any other terms is needed to resolve the issues presented by the arguments and evidence of record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). On this record, we agree with Patent Owner that Petitioner fails to provide evidence sufficient to show, even for purposes of institution, that APC-Tariff was publicly accessible before the critical date and, as a result, we determine that Petitioner fails to sufficiently establish that APC-Tariff qualifies as a printed publication. See Hulu at 13.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,608,433 - PTAB · Feb 21, 2024 · IPR2023-01162 · APJ Amber L Hagy · IPR · Institution
Instituted IPR of claims 1–22 on all asserted grounds; the Board found a reasonable likelihood that Flick ’885 combined with Flick ’561 renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, we note that, under some circumstances, § 325(d) may provide a basis for discretionary denial based on prior art and arguments presented in a previous inter partes review.5 Although the Becton Dickinson factors are focused on the question of whether the same or substantially the same art or arguments were previously presented during initial examination of the challenged patent,6 Advanced Bionics explains that these factors “more broadly provide guidance as to whether the art presented in the petition is the ‘same or substantially the same’ as the prior art previously presented to the 5 See, e.g., Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper 8 at 5–7 (PTAB Sept. 11, 2014) (informative) (exercising discretion under section 325(d) to deny institution of third petition filed by same petitioner that raised same prior art as a petition for which review was already denied); Unified Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-0072, Paper 13 at 7–9 (PTAB July 24, 2014) (informative) (exercising discretion under section 325(d) to deny institution where petition challenged overlapping claims, over same prior art, as presented in two prior petitions, one of which had progressed to a final written decision). 6 Becton Dickinson involved prior art references that had previously been considered by the Examiner during prosecution. See Becton Dickinson, Paper 8 at 18 (“Woehr, relied upon by Petitioner as the base reference here, was also the base reference in the Examiner’s Woehr/Rogers obviousness rejection during examination.”). Thus, in Becton Dickinson, the Board weighed “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Id. at 17. Office during any proceeding, including prior AIA proceedings.” Advanced Bionics, Paper 6, at 9–10. Nevertheless, Advanced Bionics counsels that the existence of a co- pending review of a patent over the same or similar prior art may not be sufficient to warrant denial. “At bottom,” noted the panel in Advanced Bionics, the two-part framework utilized for 35 U.S.C. § 325(d) “reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9 (emphasis added). Although the art in the 504 IPR at least overlaps with the art presented here, that art has not yet been fully considered or evaluated. There has been no final determination in that proceeding as to the scope of the prior art nor any final determination as to whether the submitted evidence is sufficient to show that any claims of the ’278 patent are unpatentable. As such, there is no reference point under the Advanced Bionics framework to determine whether the Office erred; there has simply been no final determination to analyze or reconsider. Accordingly, under the facts before us, we conclude that the preliminary consideration by the Board in the 504 IPR, determining to institute a trial based on a petition filed by an unrelated petitioner,7 is not a” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” If the Board institutes trial, it “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’278 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–22) of the ’278 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Eskandarian, Petitioner contends that an ordinarily skilled artisan for the ’278 patent “would have been someone knowledgeable in mobile computing systems and location technology.” Pet. 18 (citing Ex. 1002 ¶ 39). Petitioner additionally contends [t]hat person would have had either (1) a Bachelor of Science degree in Electrical Engineering, Mechanical Engineering, Automotive Engineering, Computer Engineering, or an equivalent field, with at least two years of academic or industry experience in the automotive industry; or (2) a Master of Science degree in Electrical Engineering, Mechanical Engineering, Automotive Engineering, Computer Engineering, or an equivalent field, with at least a year of academic or industry experience in the same field. Id. (citing Ex. 1002 ¶ 40). Petitioner also states that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education.” Id. at 19 (citing Ex. 1002 ¶ 40).” slip op. at 23
- Prior constructionPrior construction adoptedDecided for patent owner
“We see no reason, at this stage of the proceeding, to depart from the Board’s previous construction of this term in Omega Patents I and adopted by the Board in the 504 IPR. The Board’s previous construction is soundly premised on the written description of the ’278 patent, in accordance with Phillips. See 504 IPR DI, 415 F.3d at 12 (citing Phillips, 415 F.3d at 1315 (noting that the specification is the single best guide to the meaning of a disputed term)). As the Board noted in the 504 IPR DI, the ’278 patent describes “enabling data” as data that “may be the vehicle device code or codes, an instruction to select a code or codes from among those already stored, or the data or sequence to allow the controller 111 to generate the vehicle device code or codes, for example.” 504 IPR DI at 25 (quoting Ex. 1001, 24:8–13). This supports the Board’s construction of “enabling data” as data that “enables the recited controller to use a particular vehicle device code from among plural such codes for different vehicles by providing either (1) the code itself to the controller, or (2) data that otherwise enables the controller to select or generate the code.” Omega Patents I (Ex. 2005) at 12–13 (citing Ex. 1001, 24:5–25:28, Figs. 10–13). We adopt this construction for purposes of this decision herein. In so doing, we note that our construction is preliminary, and we advise the parties (as we did in the 504 IPR) that “[t]he parties may further develop the record at trial as to how an ordinarily skilled artisan, at the time of the invention, would have interpreted ‘enabling data’ in light of the written description of the ’278 patent, and more clearly explain any relevant differences between their respective interpretations.” 504 IPR DI at 27.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,032,278
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.