- Spotify USA Inc. v. Manuel TijerinoInstitutedPTAB · Dec 17, 2025 · IPR2025-01280 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claim 1 is obvious over Laut, Kincaid, and Bongiovi.
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) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, for the reasons given below we determine the information presented in the Petition demonstrates there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’925 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“The Board’s Preliminary Analysis — Rationale to Combine Kincaid with Laut At this stage of the proceeding, based on the express disclosures of Kincaid and Laut, we are persuaded Petitioner’s rationale is sufficient to show that a “POSITA would seek to ensure consistent loudness across tracks to maximize customer satisfaction and would thus be motivated to combine Kincaid with Laut in order to correct these problems.” Pet. 27 (citing Ex. 1003 ¶ 65). Moreover, we credit Mr. Rosenblatt’s testimony that the “POSITA’s motivation would have been at least partially financial: improving the listeners’ experiences could increase demand for the jukebox, leading to” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’925 patent “would have had a Bachelor of Science degree and a Masters [sic] degree in Computer Science, Electrical Engineering, Computer Engineering, or an equivalent field, as well as one to two years of academic or industry experience in computer-based systems for digital audio distribution and playback, or comparable industry experience.” Pet. 3 (citing Ex. 1003 ¶ 28). Petitioner further asserts that the ordinarily skilled artisan “would have been knowledgeable about audio signal processing techniques, such as gain normalization and dynamic range compression, and software engineering.” Id. At this stage, Patent Owner does not specifically address the level of skill of the ordinary artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’925 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner incorrectly interprets the issued ’925 patent claim terms under BRI. Prelim. Resp. 2. Accordingly, at this stage of the proceeding, we decline to consider Patent Owner’s proposed constructions for claim 1 under the legally incorrect broadest reasonable interpretation standard, which is only applicable during prosecution before a patent examiner. As emphasized above, in interpreting the claims of the ’925 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2023). We further emphasize that we construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on our review of the current record, we determine that no express construction of any term is necessary to resolve this case for purposes of institution. We leave it to the parties to further develop during under the proper Phillips standard applied to IPR proceedings. See Phillips, 415 F.3d at 1313.” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,146,925 - PTAB · Dec 3, 2025 · IPR2025-01026 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petition challenges because the Baliarda-543 challenges met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner filed a confidential version of the Petition as Paper 3 and a public version of the Petition as Paper 4. We cite to the public version of the Petition. institute an inter partes review of claims 1–20 in the ’677 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill as of the ’677 patent’s effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 11 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 40. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 17. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’677 patent as well as the asserted references. See, e.g., Ex. 1001, 1:26–6:47, 42:47–44:61, code (57); infra §§ III.E.1–III.E.2.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Although “Dou does not require its ‘diversity antenna architecture’ to provide spatial diversity,” Dou nevertheless requires a wireless device with some type of diversity antenna architecture. See, e.g., Ex. 1013 ¶¶ 14, 17–18, 22–24, 30, 32–34, codes (54), (57), claims 1 and 16. As an example, Dou’s independent claim 1 covering a “wireless device” requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 1. As another example, Dou’s independent claim 16 covering a “wireless device” also requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 16. As yet another example, Dou’s Abstract describes a “wireless device” including a “first diversity antenna” and a “second diversity antenna.” Id. at code (57). Petitioner does not explain how the proposed combination provides anything other than spatial diversity. See Pet. 33–35; Prelim. Reply 1–3; Ex. 1007 ¶¶ 118–124. Based on the current record, we agree with Patent Owner that with Ciais-Quadband’s antenna used for Dou’s two antennas 206 and 208, the two identical quadband antennas would have:” slip op. at 46
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,031,677 - PTAB · Dec 3, 2025 · IPR2025-01027 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition challenges, finding a reasonable likelihood that Baliarda-543 anticipates or renders obvious those claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Regarding spatial diversity, Dou explains that a first internal antenna and a second internal antenna “may be separated by a distance (D) that is no less than the quarter wavelength (>=λ/4) of the lowest frequency.” Ex. 1013 ¶ 24; see Ex. 2010 ¶¶ 35, 44. Consistent with Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency, “a commonly accepted rule of thumb is that at least a quarter-wavelength spacing between antennas is necessary to provide effective spatial diversity.” Ex. 2010 ¶¶ 33, 35, 47. Effective spatial diversity requires sufficient spacing between antennas because that technique “uses multiple antennas to improve signal reliability and performance by mitigating the effects of multipath fading and other interference.” Ex. 2010 ¶ 33. “Multipath fading occurs when a wireless signal propagates along multiple different paths of differing lengths because of interactions with obstacles, resulting in portions of the signal energy arriving at a receiver with different phases slightly offset in time.” Id. Locations insufficiently separated in terms of wavelength “tend to experience similar fading and interference characteristics.” Id. Thus, closely spaced antennas “cannot provide effective spatial diversity.” Id. By providing sufficient spacing between antennas, however, “the likelihood increases that at least one of the antennas will be positioned at a location where the multipath or other interference is relatively low, thereby improving overall signal quality and reliability.” Id. As Patent Owner contends, the proposed combination modifies Dou’s ground plane 310 to replicate Jing’s ground plane with dimensions of 36 mm × 60 mm and limits “the extent of Dou’s ground plane 310 so that it [does] not extend behind Jing’s antenna at 306, just like Dou does not extend it behind antenna 308.” See Pet. 35–36; Prelim. Resp. 20 (quoting Pet. 35); Prelim. Sur-reply 1; Ex. 1007 ¶ 120; Ex. 2010 ¶ 45. The lowest frequency of Jing’s antenna is 900 MHz. Ex. 1011, 2657–58; see Ex. 1007 ¶¶ 118, 154; Ex. 2010 ¶¶ 37, 44. The wavelength (λ) corresponding to a frequency of 900 MHz is 333.3 mm, and a quarter wavelength (λ/4) is 83.3 mm. Ex. 2010 ¶ 44. In the proposed combination, a distance of 60 mm separates the” slip op. at 49
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,349,200 - PTAB · Jan 8, 2025 · IPR2024-00798 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–36 because Petitioner showed a reasonable likelihood of proving at least one challenged claim obvious over McClure-997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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). “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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Petitioner filed a document which ranks the petitions in the instant case and IPR2024-00799. Paper 4 (Statement Regarding Multiple Petitions). Specifically, Petitioner ranks this Petition as the first petition we should consider. Id. at 1. Additionally, Petitioner argues that we should consider multiple petitions because (1) the two petitions are based on different prior art based on the ’602 patent having different effective filing dates and (2) there are a large number of claims. Id. at 1–5. Patent Owner argues that the Board routinely denies institution of multiple petitions even when there is a dispute as to the effective filing date. Prelim. Resp. 45–47. Patent Owner further argues that Petitioner has not sufficiently explained why it could not have addressed all of the claims in a single petition. Id. at 47. Because this is the first ranked petition (Paper 4, 1), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to two petitions,12 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art “would have had either (1) a bachelor of science in industrial design or mechanical engineering and three years of experience designing mobile phones or (2) a master of science in industrial design or mechanical engineering and two years of experience in designing mobile phones.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 24). Patent Owner further argues that “[a] person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. at 10 (citing Ex. 2001 ¶ 24). Alternatively, Patent Owner argues that “[a] person with less experience designing mobile phones could still qualify if the person has additional education that compensates for their lesser experience.” Id. (citing Ex. 2001 ¶ 24). Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the differences in the definition of a [person having ordinary skill in the art] impact the issues presented herein for the purposes of Institution.” Prelim. Resp. 10 (citing Pet. 16). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the “[c]laims should be construed according to the ordinary and customary meaning as understood by a” person having ordinary skill in the art. Pet. 16. Petitioner also proposes a construction of the term “housing . . . forming enclosed exterior lateral sides and a rear side.” Id. at 17. “Patent Owner agrees that the claims should be construed according to the ordinary and customary meaning as understood by a” person having 6 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. ordinary skill in the art. Prelim. Resp. 10. Patent Owner further argues that there is no need to construe the “housing” limitation at this time. Id. at 11. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).7” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - The Noco Company, Inc. v. Pilot, Inc.InstitutedPTAB · Feb 14, 2023 · IPR2022-01417 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted inter partes review of claims 1–27 on all asserted grounds, finding a reasonable likelihood that Nook-015 anticipates claims 1, 2, and 5–12.
RulingsInstitution decision- 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) (2022). 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 set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“proceeding, we agree with Petitioner that the ’236 patent is not entitled to the 2014 priority date of the original application. Whether the Specification complies with the written description requirement calls for a comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. See Ariad, 598 F.3d 1336 at 1353; Power Oasis, 522 F.3d 1299, 1306. The independent claims of the ’236 patent each require (1) a load detection sensor “configured to detect presence of a vehicle battery” and (2) a reverse polarity sensor “configured to detect polarity of a vehicle battery.” Ex. 1001, 5:16–27 (claim 1), 6:7–22 (claim 13), 6:65–7:13 (claim 18), 8:1– 15 (claim 23). The Specification of the ’236 patent does not expressly disclose both a load detection sensor and reverse polarity sensor configured to perform the recited functions. Instead, the Specification identifies a single circuit, the “automatic detection module,” that “can automatically detect[] whether the load is detected” and “whether the electrode is connected with the automobile storage battery reversely.” Ex. 1001, 2:51–54. We are persuaded by Petitioner’s arguments that the disclosure of a single circuit capable of performing two functions does not demonstrate the inventors had possession of an invention that requires two separate sensors configured to perform separate functions as recited in the claims. See Ariad, 598 F.3d 1336 at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”); Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue,” but that “one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims”); cf. PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002) (finding a claim for a method involving sequential application of two chemicals was invalid for lack of adequate written description where the specification indicated that the invention was a method of applying a “composition” containing the two chemicals). For all of the foregoing reasons, based on the present record, we agree with Petitioner that the Specification of the ’236 patent does not provide adequate written description support for distinct “load detection” and “reverse polarity” sensors, and, therefore, the challenged claims are not entitled to a priority date earlier than April 21, 2021, the filing date of the ʼ236 patent.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1 US 9,007,015 B1, issued Apr. 14, 2015 (Ex. 1004). 2 US 9,245,888 B2, issued Jan. 26, 2016 (Ex. 1010). 3 US 10,60,024 B2, issued Mar. 31, 2020 (Ex. 1005). 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—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.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). Additionally, “[u]nder the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (citation omitted); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349–50 (Fed. Cir. 2002). slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 10
Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,104,236 - PTAB · Oct 11, 2022 · IPR2022-00462 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–22 on all challenges, finding a reasonable likelihood that Apple would show the claims obvious over Young.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–22 in the ’726 patent on all challenges included in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date awardedDecided for petitioner
“The test for written-description support “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1296 (Fed. Cir. 2017); see Prelim. Resp. 12 (citing Ariad, 598 F.3d at 1344–45). The test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad, 598 F.3d at 1351. The analysis for disclosure sufficiency may consider “such descriptive means as words, structures, figures, diagrams, formulas, etc.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, the ’510 provisional reasonably conveys to those skilled in the art that the UE prohibits itself from sending additional PPI requests. Ex. 1006, 4–5, 38–43; see Ex. 1002 ¶¶ 58–59. In particular, the provisional explains that “once the UE is aware of its current state (e.g. normal configuration or power-optimized configuration), the UE may use the state information to determine an appropriate set of response behaviors.” Ex. 1006, 4; see Ex. 1002 ¶ 59. For example, “a UE in power-optimized configuration may employ inhibit/prohibit mechanisms (e.g. configure prohibit counters, timers, or other parameters) to prevent the UE from sending additional PPI requests to the eNB for a predetermined amount of time.” Ex. 1006, 4; see Ex. 1002 ¶¶ 58–59. By employing inhibit/prohibit mechanisms to control its behavior, the UE prohibits itself from sending additional PPI requests.” slip op. at 21
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for petitioner
“The test for written-description support “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1296 (Fed. Cir. 2017); see Prelim. Resp. 12 (citing Ariad, 598 F.3d at 1344–45). The test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad, 598 F.3d at 1351. The analysis for disclosure sufficiency may consider “such descriptive means as words, structures, figures, diagrams, formulas, etc.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, the ’510 provisional reasonably conveys to those skilled in the art that the UE prohibits itself from sending additional PPI requests. Ex. 1006, 4–5, 38–43; see Ex. 1002 ¶¶ 58–59. In particular, the provisional explains that “once the UE is aware of its current state (e.g. normal configuration or power-optimized configuration), the UE may use the state information to determine an appropriate set of response behaviors.” Ex. 1006, 4; see Ex. 1002 ¶ 59. For example, “a UE in power-optimized configuration may employ inhibit/prohibit mechanisms (e.g. configure prohibit counters, timers, or other parameters) to prevent the UE from sending additional PPI requests to the eNB for a predetermined amount of time.” Ex. 1006, 4; see Ex. 1002 ¶¶ 58–59. By employing inhibit/prohibit mechanisms to control its behavior, the UE prohibits itself from sending additional PPI requests.” slip op. at 21
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledDecided for petitioner
“To be enabling, the specification of a patent [application] must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). As Dr. Wells testifies, the ’510 provisional: (1) “includes a detailed Appendix A totaling 52 pages” such that implementing its disclosure would have been “well within the abilities” of an ordinarily skilled artisan; and (2) “provides detailed block diagrams illustrating the hardware involved in the wireless transmitter and receiver system in accordance with the claimed invention” that “would further allow” an ordinarily skilled artisan “to build the claimed system and perform the claimed method.” Ex. 1002 ¶¶ 60–61. At this stage of the proceeding, Patent Owner cites no evidence rebutting Dr. Wells’s testimony. See, e.g., Prelim. Resp. 16–20. Nor does Patent Owner identify any evidence that “undue experimentation” would have been needed to make and use the full scope of Young’s claim 5. See, e.g., id. at 16–20. Instead, Patent Owner presents attorney argument. Attorney argument “cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, the Federal Circuit has held that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art.” Apple Inc. v. Corephotonics, Ltd., 861 F. App’x 443, 450 (Fed. Cir. 2021). During the trial, we invite the parties to address whether that principle applies to a provisional application that (1) becomes publicly available when a nonprovisional application publishes or a patent issues and (2) may have a somewhat different disclosure than the published nonprovisional application or the issued patent. (c) slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,832,726 - PTAB · Oct 3, 2022 · IPR2022-00461 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–6 and 13–18 on all petitioned grounds, including obviousness challenges based on Zhou, Zhou and Wu, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion – Claim 1 Based on the record before us, we determine Petitioner’s offered arguments, evidence, and supporting testimony establish a reasonable likelihood that Petitioner would prevail in showing that claim 1 would have been obvious over Zhou.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“receives from a UE a part of the MDT log (“sub-MDT log”) in a UEInformationResponse message, that message also indicates whether the MDT log reporting is finished or whether an additional part of the MDT log is available. Id. at 51 (citing Ex. 1006, 5:15–17, 8:47–49, 9:24–27; Ex. 1007, 5, 7; Ex. 1003 ¶¶ 124–125). Petitioner further argues, with support from Dr. Valenti’s declaration, that one of ordinary skill in the art would have been motivated to combine these teachings from Wu and the cited teachings from Zhou, and would have had a reasonable expectation of success in this combination. Id. at 52–53 (citing Ex. 1003 ¶¶ 126–127).” slip op. at 30
- Disclosure Requirements (§112) › Written description (Ariad)Other
“In order to be entitled to rely on Wu Provisional’s filing date, Petitioner must show the portion of Wu relied on is “carried forward” from Wu Provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010). In addition, Petitioner must show that Wu Provisional provides written description support for the claimed invention in Wu. Id.; see also Dynamic Drinkware, 800 F.3d at 1378. In other words, the specification of the provisional application must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms,” 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in at least one claim of the non-provisional application. Id.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Valenti, Petitioner contends that: a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have had a Master’s degree in Electrical Engineering, Computer Science, Physics, Applied Mathematics, or equivalent and three to five years of experience working with wireless digital communication systems and cellular networks, including working with LTE or its predecessor UMTS. Ex. 1003, ¶ 35. That person might be working on developing a standard or on implementing it. Id. Additional education might compensate for less experience, and vice-versa. Id. Pet. 7–8. Patent Owner adopts this definition for the purposes of its Preliminary Response. Prelim. Resp. 9. Based on the present record including the disclosure in the ’436 patent, for the purposes of institution, we adopt Petitioner’s articulation of the level of ordinary skill in the art.” slip op. at 10
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,277,436 - PTAB · Jul 20, 2022 · IPR2022-00459 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–5, 12–16, 22–24, 26–28, and 30 on all petitioned grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board has authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’658 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner adopts this definition for the purposes of its Preliminary Response. Prelim. Resp. 8. Based on the present record including the disclosure in the ’658 patent, for the purposes of institution, we adopt Petitioner’s articulation of the level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notTerm construed board ownPreamble not limitingDecided for patent owner
“Under Phillips, we begin with the language of the claim itself. Phillips, 415 F.3d at 1314 (“the claims themselves provide substantial guidance as to the meaning of particular claim terms”). While Patent Owner argues that the claim language requires that the UE be performing radio condition measurements “while in a connected state with a base station,” we disagree. Prelim. Resp. 38. Rather, the claim language is at best ambiguous regarding whether a UE “in connection with a serving network node,” which is also “configured to periodically” perform and store measurements, must still be in connection with the serving network node during any periodic performance and storage of such measurements. On the present record, we read the language of the preamble of claim 22, if limiting, as requiring the connection with the serving network node to be present during the method steps recited in the claim, but not necessarily during the periodic performance and storage of measurements.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“(3) Analysis We agree with Patent Owner’s criticisms of Petitioner’s arguments that limitation 1.d is taught or suggested by Zhou’s disclosure of requesting additional logged measurements (beyond the report message of limitations 1.a and 1.b) only if an indicator in that report message indicates that such additional logged measurements exists. See Pet. 22–23; Prelim. Resp. 32– 33. However, Petitioner presents two additional arguments. As discussed above, supported by citation to Zhou and to its declarant’s testimony, Petitioner argues that one of ordinary skill would have known that “before a BS requests additional logged information, it must decide to do so.” Pet. 21 (citing Ex. 1003 ¶ 89). Additionally, Petitioner argues that one of ordinary skill would have understood that, just as Zhou discloses that a network node might not initiate reporting of measurements due to network conditions, the network node might not continue with additional reporting, after initiation, due to network conditions. Id. at 21–22 (citing Ex. 1005, 12:7–16; Ex. 1003 ¶ 91). We do not agree with Patent Owner that these statements, supported by declaration evidence and a reasoned explanation, amount to an inappropriate appeal to “common sense.”” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosurecites Markman · KSR · GrahamPatents in suitUS 8,798,658 - Apple Inc. v. Memoryweb, LLCInstitutedPTAB · Jun 10, 2022 · PGR2022-00006 · APJ Jason M Repko · PGR · Institution
The Board instituted PGR of claims 1–59 on all grounds, finding claim 1 more likely than not obvious over A3UM.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of post-grant review requires that the petition, if not rebutted, demonstrate that it is more likely than not that at least one challenged claim is unpatentable. 35 U.S.C. § 324(a). Applying that standard, we institute a post-grant review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). At this stage and on the current record, we also disagree with Patent Owner’s argument that the manual was not publicly accessible. See Prelim. Resp. 20– 25; Sur-reply 4–5. Rather, we preliminarily determine for institution that the declaration of Matthew Birdsell (Ex. 1020) sufficiently supports Petitioner’s assertions on this issue. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For example, we preliminarily agree that “A3UM’s Viewer and Browser interfaces also both use a gallery design, where a row of items is displayed above a larger viewer interface displaying one item in greater detail.” Id. at 33 (citing Ex. 1003 ¶ 129). Also, like the Browser’s Grid view, the Faces browser displays a grid of thumbnail images. See id. at 34 (citing Ex. 1005, 80, 216). Considering these teachings, we preliminarily agree that “A3UM’s disclosure of both Grid and Filmstrip (+Viewer) options for the own benefits, and implementing an interface using one or the other would have involved only routine skill.” Id. at 34–35 (citing Ex. 1003 ¶ 131). At this stage and on this record, Petitioner also sufficiently shows that one of ordinary skill in the art “would have been motivated to modify the Faces browser to adopt a Viewer/Browser arrangement that displays selected images ‘at full size.’” Id. at 35. For example, Petitioner asserts that the proposed modification would benefit users of the Viewer, allowing them to “(1) ‘examine an image at its full size’; (2) ‘apply adjustments, keywords, and metadata to an image in the Viewer’; (3) customize how images are displayed, such as ‘at full resolution’ and with ‘metadata,’ and (4) use the Loupe tool, i.e., a magnifying glass.” Id. (citing Ex. 1005, 51, 260, 266; Ex. 1003 ¶ 132). According to the Petition, “Doing so could improve the usability of A3UM’s face confirmation process for detected yet unconfirmed faces by allowing the user to review unconfirmed images ‘at full size’ before confirming them.” Id. (citing Ex. 1003 ¶ 133; Ex. 1005, 419–420, 424–425). Thus, at this stage and for institution, we preliminarily determine that Petitioner has sufficiently shown that the subject matter recited in the person-view limitations would have been obvious.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Instituted
“The test for written-description sufficiency “is whether the specification ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of [the relevant time].’” In re Glob. IP Holdings LLC, 927 F.3d 1373, 1377 (Fed. Cir. 2019) (quoting Ariad, 598 F.3d at 1351). Here, the Petition relies on Dr. Terveen’s analysis of how a skilled artisan would have viewed Figure 6. Pet. 92 (citing Ex. 1003 ¶ 316). Dr. Terveen explains that Figure 6 contains multiple copies of the same person-name combination. Ex. 1003 ¶ 316. In Dr. Terveen’s view, these repeated thumbnails would not be simultaneously the claimed first thumbnail and first digital file, “which a skilled artisan would understand to mean they are not the same.” Id. Dr. Terveen asserts that there is no association between the duplicated thumbnails. Id. In at least this way, we preliminarily determine that the Petition’s written-description challenge conveyed to those skilled in the art.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 11,017,020 - Netskope, Inc. v. Bitglass, Inc.InstitutedPTAB · Dec 14, 2021 · PGR2021-00091 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1, 2, 4–10, and 12–16; the Board found the petition showed a more-likely-than-not basis that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that 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). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’671 patent.” slip op. at 2
- Parallel petitionsOther
“II. DISCRETIONARY DENIAL Patent Owner argues that we should exercise discretion to deny the Petition in this proceeding, or the petition in PGR2021-00092. Prelim. Resp. 15. Patent Owner argues that Petitioner filed two petitions challenging the same patent without justifying the need for two petitions. Id. at 3–15. We exercise our discretion to not institute trial in PGR2021-00092, because Petitioner did not justify two petitions challenging the ’671 patent.13 In view of the denial of institution of PGR2021-00092, we need not consider further Patent Owner’s arguments on discretionary denial in this Decision.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not define the level of ordinary skill and, instead, states that we should “apply[] the Petition’s asserted definition of the level of ordinary skill in the art.” Prelim. Resp. 44. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is consistent with the prior art of record and the skill reflected in the Specification of the ’671 patent, based on our review of the limited record.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms need an express construction. Pet. 25. Patent Owner states that “the Petition does not appear to present any issues that require the Board to construe the claims to resolve the issues at the institution stage.” Prelim. Resp. 44. We agree with the parties that, at least at this stage of the proceeding, we need not expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,855,671
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.