- Crowdstrike, Inc. v. Gosecure, Inc.InstitutedPTAB · May 2, 2025 · IPR2025-00068 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Capalik and King.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response 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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–21 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Patent Owner argued that we should not institute both petitions. Paper 8, 1–5. Patent Owner argued that the challenged claims are not long and Petitioner’s concerns about the construction of “association” in limitation 1(b) are “contrived.” Id. at 1. Patent Owner contends that Petitioner could have addressed all of the challenged claims in one petition. Id. Noting that both the ’70 petition and the instant Petition challenge all claims of the ’872 patent, Patent Owner argued that the number of claims challenged does not necessitate multiple petitions. Id. at 2–3. Patent Owner also argued that Petitioner could have waited until closer to the statutory due the claim language “association” in the related district court proceeding. Id. at 4–5. Considering the facts holistically, we determine the totality of the circumstances here supports Petitioner’s position that two petitions are warranted. Petitioner has challenged a large number of claims directed to complex subject matter. And the task of challenging those claims is complicated by the potential for Patent Owner to argue for a narrow construction of “association” in limitation 1(b). Patent Owner’s suggestion that Petitioner would not have needed to file multiple petitions if it had waited longer to file a petition is not persuasive. Paper 8, 4–5. Patent Owner does not explain why a petitioner should be encouraged to delay the filing of its petition. See id. And the parties appear to agree that Patent Owner has not weighed in on whether “association” should be interpreted narrowly or broadly. Prelim. Reply. 8; Prelim. Sur-Reply 8. The present circumstances, considered as a whole, warrant two petitions challenging the claims of the ’872 patent.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner explains the applicable level of skill in the art as follows: As of June 24, 2010, a person of ordinary skill in the art (POSITA) would be a person having a bachelor’s degree in computer science, computer engineering, or an equivalent, as well as two years of industry experience. A POSITA would also have had a working knowledge of software security analysis and dynamic malware analysis. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. explanation of the level of skill in the art. See Prelim. Resp. 13. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’872 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We first look to the claim language itself. It recites “transmitting to one or more computer systems,” not transmitting to “devices.” Ex. 1001, 19:53. Although the claim language “one or more computer systems” may encompass “protected network devices,” we do not see a reason that its plain meaning would be limited to network devices, much less protected network devices. Nor do we see a reason that the plain meaning of “one or more computer systems” is limited to protected network devices to the exclusion of a network that includes protected network devices and one or more other components. In support of its suggestion that the claim language “one or more computer systems” excludes a combination of protected network devices and one or more other components, Patent Owner cites the claim language “for preventing future attacks, to the one or more computer systems.” Prelim. Resp. 20–24; Prelim. Sur-Reply 1–2. But Patent Owner does not provide reasoning or evidence persuading us to read the claim language more narrowly than its plain meaning, which encompasses preventing future attacks to a computer system that includes both protected network devices and one or more other components.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,954,872 - PTAB · Apr 21, 2025 · IPR2024-01489 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that Cohen anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Identity of terminology is not required for a claim element to be met directly by the prior art. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted) (“[T]his is not an ‘ipsissimis verbis’ test.”). For anticipation, we take into account not only the specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). B. Level of Ordinary Skill in the Art” slip op. at 13
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that a “second IPR was filed against the same patent in proceeding IPR2024-01490.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. challenges the alleged priority date of the ’731 patent (IPR2024-01489) (‘First Petition’) and the second petition assumes that the Patent Owner’s claimed priority date is valid, and addresses prior art references predating that priority date (IPR2024-01490) (‘Second Petition’).” Ex. 1019, 1. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because Petitioner’s stated reasons for filing two petitions are consistent with the CTPG. See generally Ex. 1019 (citing CTPG, 59 (“the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references)). C. The ’731 Patent” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9–10 (PTAB Apr. 22, 2014); Mission Integrated Techs., LLC v. Joshua Clemente, IPR2023-01285, Paper 16 at 18 (PTAB Feb. 23, 2024). Then, Patent Owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 16 (citing Ex. 1003 ¶ 40). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented. C. Claim Construction” slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,973,731 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - PTAB · Sep 25, 2023 · IPR2023-00531 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1, 3–9, and 20 because Petitioner showed a reasonable likelihood that Flore anticipates them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1, 3–9, and 20 of the ’988 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’988 patent. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1, 3–9, and 20 of the ’988 patent is instituted with respect to the ground set forth in the Petition; and” slip op. at 33
- BurdenDecided for petitioner
“We have reviewed the evidence and find that, at this stage, Petitioner sufficiently shows on this record that Flore teaches “routing the communication from the first DMA gateway [Inter-AS Anchor 152] to the target device [UE 110] by relaying the communication from the first DMA gateway [Inter-AS Anchor 152] to the second DMA gateway [SGSN 142] via the DMA gateway communications network [via a Gn interface].” Given that we find, at this stage, that Petitioner sufficiently shows that Flore teaches every limitation in the claim, on this record, Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating that claim 1 of the ’988 patent is anticipated by Flore.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this time, we decline to adopt a construction of the claim term “DMA server” that would limit its scope to include a P2P connection with other DMA servers. The claims do not include a limitation calling for the “DMA server” to be connected to other DMA servers via a P2P connection. There is a single mention of “a DMA server” in the claim and its scope is not limited so as to be connected to other DMA servers via a P2P connection. See, e.g., Ex. 1001, claim 1[b]: “a DMA server.” Nor does the present record sufficiently support the view that a POSITA would have understood the claim term “DMA server” to be necessarily limited to one that it is connected to other DMA servers via a P2P connection.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“II. ANALYSIS A. Principles of Law To “demonstrate anticipation, the proponent must show ‘that the four corners of a single, prior art document describe every element of the claimed 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 102. Because the challenged claims of the ’988 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 102 throughout this Decision. invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006)). The prior-art document “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Id. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Hence, a patent challenger cannot rely on portions from different, unrelated embodiments in a prior-art document to demonstrate anticipation. See id. at 1369, 1371. The “disclosure of a limited number of combination possibilities” may anticipate a claim. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017). Hence, a reference may anticipate “if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). The “dispositive question regarding anticipation [is] whether one skilled in the art would reasonably understand or infer from the [reference’s] teaching” that it discloses every claim element arranged as in the claim. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991); see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003).” slip op. at 7
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,855,988 - PTAB · Apr 12, 2023 · IPR2022-01563 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 1–14 because Petitioner showed a reasonable likelihood that claims 1–14 would have been obvious over Yong and Xavier.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the ground set forth in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3. Additionally, KIPO Yong tends to show that Yong constitutes an authentic version of Korean Publication No. 10-2007-0087811. Yong’s and KIPO Yong’s Figures appear substantially the same. Compare Ex. 1009, 42–48, with Ex. 2001, 28–33. Additionally, the content starting on page 2 of Yong, where Patent Owner contends “claims appear to be present,” closely resembles the content starting on page 11 of KIPO Yong, which Patent Owner posits “may be claims.” Prelim. Resp. 22, 29; Ex. 1009, 2–30; Ex. 2001, 11–27. Consistent with Patent Owner’s observations, these portions of Yong and KIPO Yong appear to present claims. Specifically, these sections of Yong and KIPO Yong each appear to present exactly 140 claims. Ex. 1009, 2–30; Ex. 2001, 11–27. These sections share a number of other similarities, also. For example, in both Yong and KIPO Yong, in the midst of Korean characters, what appears to be claim 69 recites “POS.” Ex. 1009, 16; Ex. 2001, 19. Similar commonalities appear numerous places within these portions of Yong and KIPO Yong. Ex. 1009, 2–30; Ex. 2001, 11–27. The similarities between Yong and KIPO Yong tend to show that Yong is an authentic version of Korean Publication No. 10-2007-0087811 and has the same substantive content as KIPO Yong, just formatted and arranged differently. This is not significantly undermined by Patent Owner’s observations about certain differences between the documents, especially in the absence of a translation of KIPO Yong, which would have facilitated comparing the documents’ content. Indeed, considering Patent Owner’s omission of a translation of KIPO Yong, Patent Owner’s complaints of prejudice and “Petitioner’s hide-the-ball tactics” ring hollow. Prelim. Sur-reply 2, 5. Although we agree with Patent Owner that Petitioner has not yet met the requirements of Rule 42.63(b) for the translation of Yong, we do not find it warranted to deny institution on this basis. Instead, we treat Patent’s Owner’s pre-institution arguments that Petitioner fails to comply with Rule 42.63(b) as evidentiary objections. If Patent Owner wishes to preserve its objections, Patent Owner must formally object to Petitioner’s evidence after institution of inter partes review by this Decision.” slip op. at 16
- Parallel petitionsDecided for petitioner
“As discussed above, Petitioner filed four petitions challenging the ’435 patent on the same day, including this proceeding, IPR2022-01563, as well as IPR2022-01528, IPR2022-01561, and IPR2022-01564. In this proceeding, IPR2022-01563, and in IPR2022-01561 and IPR2022-01564, Petitioner challenges claims 1–14 of the ’435 patent over various prior art grounds. Pet. 11; Not. 2. In IPR2022-01528, Petitioner challenges claims 15–19 of the ’435 patent over various prior art grounds. Not. 2. Pursuant to the Board’s Consolidated Trial Practice Guide (Nov. 2019) (“TPG”),3 Petitioner’s Notice provides a ranking of the four petitions in the order in which Petitioner wishes the Board to consider them on the merits and a succinct explanation of the differences between the Petitions. See TPG 59–60; Not. 1–5. Petitioner ranks the instant Petition as “3,” the petition in IPR2022-01528 as “1,” the petition in IPR2022-01561 as “2,” and the petition in IPR2022-01564 as “4.” Not. 2–5. Petitioner, however, contends that “all four Petitions merit institution” because “[a]ll four Petitions present significant material differences which are not redundant and which demonstrate different substantive bases for rendering obvious or for showing anticipation of each of the challenged claims of the ’435 Patent,” and “[d]ue to word count limitations, Petitioner 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. was not able to present all these grounds in a single petition.” Id. at 1, 3. Petitioner elaborates that 1) the claims of the ’435 Patent comprise over 1,500 words, such that to cover a plurality of grounds in one petition covering all the claims would use at least twenty percent of the 14,000-word petition limit; and 2) Patent Owner has asserted 15 of the 19 claims of the patent in the pending district court litigation (see Ex. 1026). Id. at 2. Patent Owner argues that “the panel should, at most, address the -01528 petition on the merits, as petitioner requested, and discretionarily deny the other three petitions under § 314(a).” Prelim. Resp. 3–4. Regarding the ’435 patent’s claims’ length, Patent Owner argues that “the ’435 Patent claims is indicative of the quality of examination, rather than an excuse for the piling on that Petitioner exhibits in these challenges.” Id. at 6. Under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“3. Discussion In asserting obviousness of claims 1–14 over Yong and Xavier, Petitioner argues that Yong discloses many of the challenged claims’ limitations. Pet. 13–43. For example, Petitioner relies primarily on Yong as allegedly disclosing claim 1’s limitations. Id. at 13–26. Petitioner relies on Xavier as “teach[ing] the use of a session between a mobile phone and se[r]ver in a self-checkout system.” Id. at 15. Petitioner argues that “[h]aving reviewed Xavier, a [person of ordinary skill in the art] would have been motivated to add the session handling of Xavier to Yong.” Id. According to Petitioner, “[a person of ordinary skill in the art] would have understood that a session manager would have been necessary to manage the communications between the mobile communication terminal 100 and the store POS server 200, the commercial transaction server 400 and the payment server 500.” Id. At this stage, aside from the arguments discussed above in Section II.C.1 that we should not consider Yong as prior art, Patent Owner does not dispute the merits of Petitioner’s challenge to claims 1–14. Having reviewed Petitioner’s arguments and evidence, we determine Petitioner has demonstrated a reasonable likelihood of establishing that claims 1–14 would have been obvious over Yong and Xavier. Pet. 1–43.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 12, 2023 · IPR2022-01528 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 15–19 on all petitioned grounds, finding a reasonable likelihood that Yong anticipates claim 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 15‒19 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner’s argument that Petitioner’s parallel filing of four petitions warrants denying all four petitions. Prelim. Resp. 7 (“Petitioner’s abuse of process in filing four petitions justifies discretionary denial of all of the petitions.”). Accordingly, given that Petitioner ranks the instant Petition “1,” we decline to deny institution in this proceeding. Additionally, under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 33
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person having ordinary skill in the art (“POSITA”) as of the claimed priority date would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems. (Shamos ¶ 34.) More education can supplement practical experience and vice versa. (Id.) Pet. 12. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. Prelim. Resp. 18. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’435 patent and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - PTAB · Mar 17, 2022 · IPR2021-01593 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 across all asserted grounds, finding a reasonable likelihood of success on the anticipation grounds and the Shiomi–Stephens obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Although the parties and the district court have invested some effort in the ’186 and ’188 proceedings, we find the investment at this stage relatively minor, especially considering the tasks not yet completed in the district court proceeding. Patent Owner does not dispute Petitioner’s assertion that no depositions yet have occurred. Pet. 10; Prelim. Resp. 1–5. Although some pretrial activity has been completed, much more remains, including the deadline for amended pleadings, fact discovery, submission of expert reports, expert discovery, and a number of other pretrial activities. Ex. 3001, 4–5. Additionally, Patent Owner does not dispute Petitioner’s position that it promptly filed the Petition. Prelim. Resp. 4. On the whole, this factor weighs against exercising discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- BurdenInstituted
“the Petition must explain clearly its bases for asserting unpatentability of the challenged claims. A proper petition “identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claims is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a). We require that a petition include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). We also require that a petition “specify where each of the elements of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Petitioner’s challenge of claims 1–10, 13, and 15–18 as allegedly obvious over Shiomi fails to meet these requirements. The Petition neither identifies any difference between the teachings of Shiomi and the challenged claims, nor identifies any specific allegedly obvious modification of Shiomi’s teachings. Thus, Petitioner’s presentation of its challenge of claims 1–10, 13, and 15–18 as allegedly obvious over Shiomi stymies a proper obviousness analysis, which requires ascertaining the “differences between the prior art and the claims at issue.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Nevertheless, because we institute a trial on other grounds, we institute a trial on this ground as well. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). See also SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage, we find Petitioner has shown sufficiently that Childs discloses claim 1’s recitation of “determining a transfer mode between synchronous and asynchronous, wherein a configuration register specifies said transfer mode between synchronous and asynchronous.” (3) “determining whether said transfer mode is write or read” Petitioner argues that “Childs discloses determining whether the transfer mode is a read or write mode.” Pet. 19. Petitioner cites Childs disclosure of various signals with output registers 34 and output enable registers 48. Id. at 19–20. For example, Petitioner contends that “[t]hrough the state of the write enable signal (W*) and output enable signal (OE2), Childs determines whether the transfer is a read or write operation.” Id. at 20. At this stage, we find Petitioner has shown sufficiently that Childs discloses claim 1’s recitation of “determining whether said transfer mode is write or read.” (4) “transferring data according to said determined mode” Addressing this claim language, the Petition contends that Childs discloses transferring data according to said determined mode. For example, Childs describes a synchronous read cycle at Col. 4:27–48 (“during a read cycle of memory 20. . .”), and a synchronous write cycle at Col. 4:49–Col. 5:5 (“during a write cycle…”). Further, an example of transferring data according to the asynchronous mode is described at Col. 8:28–45 (“In the asynchronous mode. . .”). In both synchronous and asynchronous modes, data is transferred as data signal Q from output register 34. See Ex. 1008 (Childs) at Col. 4:15–19; Ex. 1011 (Ayazi Decl.) at ¶¶ 107.” slip op. at 24
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 6,791,898 - PTAB · Mar 17, 2022 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Institution
Instituted post-grant review of claims 1–23 on all grounds; petitioner showed that claims 1–12, 15–17, and 21–23 were more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2021). We may not institute a post-grant review “unless . . . it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant review, the Board 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. § 42.208(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“pertinence of Timony’s disclosure or of the combined teachings of Gilb ’792/Bundy and Timony/Bundy (and Tsukamoto/Bundy), and did not issue a rejection based on such disclosure or combined teachings, and that this constitutes Examiner error. As discussed below in Section III, we determine that Petitioner has established that it is more likely than not that at least claims 1–12, 15–17, and 21–23 of the ’867 patent are unpatentable. Accordingly, Becton Dickinson factor (e) weighs against exercising discretion to deny institution under § 325(d).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Owner’s arguments as supported by the above-cited evidence, and find Patent Owner’s proffered construction reasonable. Accordingly, for purposes of institution, we construe the limitation “each extension flange lying in an extension flange plane” to mean “for each extension flange an extension flange plane is within the extent of the extension flange from the channel-shaped portion to the connection portion.”” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Tsukamoto and Bundy with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that independent claim 1 is unpatentable as obvious over the combination of Tsukamoto and Bundy. Accordingly, at this stage of the proceeding, we are persuaded that Petitioner has shown that it is more likely” slip op. at 85
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,021,867 - Avery Dennison Rfid Company / Avery Dennison Retail Information Services LLC v. Evrythng LimitedInstitutedPTAB · Jan 25, 2022 · IPR2021-01259 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–29, finding a reasonable likelihood of success on the Lim anticipation and Fitzpatrick–Herzig obviousness grounds, among others.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Determination on Discretion to Institute We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. After considering the factors outlined in the precedential order in Fintiv, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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 Director determines . . . 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 as to the challenged claims of the ’321 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill in the art. This level of skill comports with the teachings of the ’321 patent and the asserted prior art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and “rules database” (recited in claims 1, 22, and 29). Pet. 18–23. Patent Owner does not address these proposed constructions and specifically notes its belief that, for the purposes of institution, no claim construction is necessary. Prelim. Resp. 6–7. After considering the parties positions and the record at this time, for the purposes of institution, we determine no claim construction is required. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,794,321
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.