- Apple Inc. v. Memoryweb, LLCAll claims unpatentablePTAB · Jul 8, 2026 · PGR2022-00006 · APJ Jason M Repko · PGR · Remand
On remand, the Board held claims 1–59 unpatentable: claims 1–6, 8–37, 40–44, and 49–59 over A3UM under §103, and claims 6, 7, 38, and 39 for lack of written description under §112.
RulingsRemand decision- RemandOther
“On remand, the Board is to determine “[w]hether the alleged inconsistency in [Petitioner’s] treatment of map images compared to other first/second versions of claim elements supports rejecting [Petitioner’s] theory on claim-construction or other merits grounds is a matter for the Board to consider in the first instance on remand, constrained by any relevantly similar now-final findings of fact and conclusions of law in the ’020 PGR and related proceedings” (CAFC Dec. 16). Thus, the two issues on remand are (1) the construction of the second map image and (2) whether A3UM teaches or suggests the claimed “second map image” under that construction.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision and Final Written Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12; FWD 30–31. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision and Final Written Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“c. Analysis We agree with Petitioner that the “second map image” should be construed as the map image in the second person view. Reply 5. Under Petitioner’s proposed construction, the terms “first” and “second” identify which person view that the map image is within. Id. The map image’s connection to the person view is important to how the user interacts with the interface because selecting the map image in one view does something different than selecting the map image in another, as recited in claims 14 and 46.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Here, we disagree with Patent Owner’s argument because it is based on the premise that the second map image is different from the first in a way that is not reflected in the claims. See Section II.C.3 supra. Even if “the claims consistently use the terms ‘first’ and ‘second’ to refer to separate and distinct elements,” A3UM’s first and second map images are separate and distinct elements for at least the reason they are included in separate and distinct views in the interface. See Pet. 63; Reply 5. As discussed in Section II.C.3, the second map image is the map image in the second person view. Here, Petitioner sufficiently shows that A3UM provides the same functionality for each person, including displaying the person in the Faces view with their name within A3UM’s overall user interface. See Pet. 62 (citing Ex. 1003, ¶215; Ex. 1005, 418–420). Patent Owner does not dispute this. See PO Resp.; Sur-reply. For the same reasons why A3UM teaches the “first map image” with respect to a first person view recited in claims 1 and 31, Petitioner has shown that A3UM also teaches the “second map image” in the second person view. See FWD 53–56. In sum, Patent Owner’s arguments are unpersuasive because they are based on an incorrect claim construction, and Petitioner has shown that claims 13 and 45 are unpatentable. 5. Claims 14–16 and 46–48 Apart from the arguments analyzed above, Patent Owner does not present separate arguments directed to the subject matter of claims 14–16 burden to show that the challenged claims are unpatentable. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). We have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them persuasive as they are consistent with and supported by the evidence of record. See Pet. 63–64. Thus, Petitioner has shown that claims 14–16 and 46–48 are unpatentable over A3UM.” slip op. at 14
Patent outcomesUS 11,017,020 unpatentableClaim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,017,020 - Thermaltake Technology Co., Ltd. / Thermaltake Inc. v. Chien-Hao ChenAll claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01230 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–5 are unpatentable; substitute claims 6 and 7 are unpatentable, and the Revised Motion to Amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“our Institution Decision comports with the qualifications a person would have needed to understand and implement the teachings of the ’336 patent and the prior art of record. Inst. Dec. 15. Accordingly, we adopt the level of skill discussed in our Institution Decision. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Pharms. Inc. v. Amino Chemicals Ltd., 715 F.3d 1363, 1374 (Fed. Cir. 2013)). Accordingly, Patent Owner applies a different definition of “side,” in claim 1’s recitation of “an illumination area on at least two sides of the fan at top of the body,” to that definition used to understand “side[s] of the body,” discussed above. Specifically, Patent Owner argues that Petitioner’s dictionary definition of “side,” including “an area next to something” applies to “an illumination area on at least two sides of the fan at the top of the body.” See id. at 8–9.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Hasegawa, and Huang teaches or suggests the limitations of claim 3, and that one skilled in the art would have been motivated to combine those teachings with a reasonable expectation of success. See Ex. 1004 ¶¶ 136– 140; Ex. 1008, 8:4–15, 3:20–29. Accordingly, we determine that claim 3 would have been obvious over Lai and Huang, or Lai, Hasegawa, and Huang. F.” slip op. at 50
- 112 supportMotion to amend, deniedDenied
“c) Conclusion We conclude that Patent Owner's Revised Motion to Amend adds new” slip op. at 90
Patent outcomesUS 10,690,336 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,690,336 - Unified Patents, LLC v. Ideahub Inc.All claims unpatentablePTAB · Feb 5, 2024 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Final written decision
Claims 1–13 are unpatentable for lack of written description under § 112(a); the Board did not reach the anticipation and obviousness grounds based on HEVC265.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art at the priority date for the ’274 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). This definition would apply at the earliest claimed priority date of the ’274 Patent as well as any later date. Pet. 12 (citing Ex. 1005 ¶¶ 50–52). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s definition as it appears to be consistent with the Specification of the ’274 patent and the cited reference.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“A party is collaterally estopped from relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 21
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“For the reasons that follow, we determine that the ’928 application does not provide sufficient written description support, for at least independent claim 1 of the ’274 patent, so as to “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of the ’928 application. Ariad, 598 F.3d at 1351. Accordingly, we are persuaded that the ’928 application lacks sufficient written description support for the invention recited in claim 1 of the ’274 patent, and thus, claim 1 does not receive an effective filing date as early as that of the ’928 application (i.e., December 23, 2010). We further determine that Petitioner filed the Petition within the 9-month statutory period for requesting post-grant review in accordance with 35 U.S.C. § 321(c). The ’274 patent issued on September 14, 2021 (see Ex. 1001, code (45)), and the present Petition was accorded a filing date of June 9, 2022 (see Paper 5). Accordingly, the Petition was filed less than 9 months after the date of issuance of the ’274 patent. In view of the above, we are persuaded that the ’274 patent is eligible for post-grant review.” slip op. at 16
Patent outcomesUS 11,122,274 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,122,274 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00928 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the challenged claims were entitled to the 2010 priority date, making Morris not prior art and defeating the sole obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written-description requirement. Pet. 74. We disagree for two principal reasons. First, the paragraph explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument is based on a narrow reading that is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 74. The nodes must communicate and cooperate because TCP has various” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00926 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: the challenged claims were entitled to the ’454 application’s priority date, so the petition showed no reasonable likelihood of unpatentability.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 64–65.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that 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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
§ 112 disclosurePatents in suitUS 11,050,855 - Apple Inc. v. Memoryweb, LLCSome claims unpatentablePTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision
Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96
Patent outcomesUS 11,017,020 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,017,020 - Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentablePTAB · May 22, 2023 · PGR2022-00009 · APJ Monica S Ullagaddi · PGR · Final written decision
Claims 1–5, 7–12, and 14–19 are unpatentable based on lack of written description, anticipation by Bruning, or obviousness over Bruning and Kabel.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lighting device.” Accordingly, we determine that the level of ordinary skill in the art is “a bachelor’s degree in electrical engineering, or similar technical field, with two years of relevant experience in the field of design and/or development of LEDs and circuits,” as Petitioner proposes and that “the field of design and/or development” would be “in the context of lighting devices” as Patent Owner proposes, in which “[a]n increase in experience could compensate for less education.” Id.; Pet. 24 (citing Ex. 1002 ¶ 46).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“theoretically fall under the “or greater” portion of the amended claim limitation “forward voltage of 6V or greater,” Applicant distinguished Colby on the basis that the 120V AC voltage from a wall outlet is not “the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow current to flow through the LEDs.” See Ex. 1023, 9 (emphasis added). Applicant’s argument specifically identifies the claim language at issue––“forward voltage of 6V or greater”––and specifically states that it is not disclosed because Colby does not disclose the minimum voltage and instead, discloses something else, something larger–– 120V AC voltage. Accordingly, we conclude that Applicant disclaimed any voltage that is more than “the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow current to flow through the LEDs” from the scope of “forward voltage.”” slip op. at 25
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“4. 35 U.S.C. § 112(a) With respect to the written description requirement, we are persuaded” slip op. at 32
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable
“Basis § Unpatentable Unpatentable Lack of written description, 3, 10, 17 112(a) 3, 10, 17 Lack of enablement 3, 10, 17 112(b) Indefiniteness 3, 10, 17 Lack of written description, 4, 11, 18 112(a) 4, 11, 18 Lack of enablement 4, 11, 18 112(b) indefiniteness 4, 11, 18” slip op. at 77
Patent outcomesUS 10,932,341 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,932,341 - Unified Patents, LLC v. Ideahub Inc.InstitutedPTAB · Feb 6, 2023 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all grounds, finding it more likely than not that at least claim 1 lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2021). Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , 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.” After considering the Petition, Patent Owner’s Preliminary Response, Petitioner’s Preliminary Reply, Patent Owner’s Preliminary Sur-reply, as well as all supporting evidence, we determine that Petitioner satisfies its burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims of the ’274 patent is unpatentable. Therefore, we authorize a post-grant review to be instituted as to all grounds and all challenged claims. 37 C.F.R. § 42.208(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.”).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Id. at 7:24–8:4 (emphasis added). The ’928 application repeatedly makes clear that directionality and intra mode are related, but distinct concepts. They are not interchangeable as Patent Owner argues. On this point, we find Dr. Freedman’s explanation in paragraph 85 of his Declaration on the relationship between “intra mode” and “directionality” to be particularly well-reasoned and persuasive. As Dr. Freedman explains, [t]hroughout the ’928 application, the text uses the term “directionality” to refer to characteristics of neighboring blocks, whereas the term “intra mode” is used when referring to the current block. For example, the ’928 application describes that “directionality” of neighboring blocks is “estimated from the neighboring blocks” that “have already been reconstructed” while the “intra mode” is selected for the current block for purposes of reconstructing that current block. This is likely because the neighboring blocks “have already been reconstructed” and thus, the intra mode number that was used in reconstructing those blocks is no longer pertinent. Instead, what is pertinent in the ’928 application’s method is the directionality characteristic of those neighboring blocks. Phrased differently, in the ’928 application, directionality is a concept that is evaluated after performance of intra prediction (i.e., after reconstruction), whereas the intra mode or number is a concept used during performance of intra prediction. They are not equivalent in the context of the ’928 application. Ex. 1005 ¶ 86 (citing Ex. 1028, 11:14–12:4, 25:10–15; Ex. 1036, 706 (“The DCT coefficients gathered from the MPEG 2 process are used to estimate the directional features in a picture. The estimated directional features are then used to compute the intra prediction modes in the H.264 encoding stage.”)).8 Thus, we are persuaded by Dr. Freedman’s testimony, supported by Kalva, that these terms are not synonymous, as is Patent Owner’s and its expert’s position.” slip op. at 31
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“F. Anticipation and Obviousness Challenges Based on HEVC265 Petitioner contends that claims 1–4 and 6 are anticipated by, or alternatively, rendered obvious in view of HEVC265. Pet. 49–52. Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,122,274
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.