- PTAB · Mar 27, 2025 · IPR2025-00003 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–8, 10, 12, 14, and 16–20 for all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA): [W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner does not dispute the Petitioner’s proposal at this time. Prelim. Resp. 8. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the special case of key changes requested for security reasons outside of any fixed duration lifespan. Ex. 1001, 10:40–42. Considering, as we must, the disclosure of the ’178 patent as a whole, the scope of the disclosure is directed broadly to key rotation in general, whether due to scheduled key expiration times or otherwise. Id. at code (57), Fig. 3, 1:63–65, 2:23–25, 3:26–28, 9:47–49; see also Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“combine the teachings of Peterka, Suzuki, and Bocharov. Pet. 51–53, 57– 59, 66–67. Petitioner argues that Suzuki, like Peterka, discloses clients acquiring keys for multiple media segments, and provides implementation details, not disclosed in Peterka, regarding how to keep track of keys and their expiration times, and how to determine when a new key is required. Pet. 51–52 (citing Ex. 1003 ¶¶ 161–164). Petitioner argues that, given that Peterka and Suzuki are in the same field of art, one of ordinary skill would have been motivated to use the specific details of Suzuki in implementing the disclosure of Peterka. Id. at 53, 66 (citing Ex. 1003 ¶¶ 165–167, 202–204). Petitioner also argues that Peterka indicates that video content can be streamed using various protocols and bit rates, but does not provide implementation details. Pet. 57–59, 66–67 (citing Ex. 1003 ¶¶ 179–184, 204). However, argues Petitioner, one of ordinary skill in the art would have had reason to use the manifest files of Bocharov to provide the necessary information to handle different protocols and bit rates. Id. Petitioner argues that one of ordinary skill in the art would have been so motivated because implementing Peterka’s system to use Bocharov’s manifests would have provided an effective solution for allowing clients to switch between multiple versions of a media program having different encodings/qualities/bit rates. Id. Patent Owner does not specifically address the merits of combining Peterka, Suzuki, and Bocharov. See generally Prelim. Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Peterka, Suzuki, and Bocharov.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,313,178 - Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01342 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds; it found a reasonable likelihood that claim 1 would have been obvious over Whitehead.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner contends that one motivation for combining would have been that Marcus ’904 includes additional disclosure of targeting media programming to specific users, which would lead to better customization of media programming by Cristofalo. Pet. 38 (citing Ex. 1002 ¶ 122). This assertion is vague and unexplained. Petitioner also asserts that Marcus ’904 provides “additional implementation details” on how final media programming is generated and formatted for display. Id. at 38–39 (citing Ex. 1002 ¶ 123). We fail to see, at this stage, how merely disclosing additional details would motivate a skilled artisan to combine references. If we were to agree with a proposed combination merely because one reference includes details another does not, this could “swallow all of patent law.” Cf. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (addressing patent eligibility). Finally, Petitioner contends that combining Marcus ’904’s advertising sources would unlock new revenue sources for Cristofalo. Pet. 39 (citing Ex. 1002 ¶ 124). Patent Owner argues that this rationale appears to be superfluous, since Cristofalo already discloses targeting advertising to users. Prelim. Resp. 26 (“Cristofalo’s receiving system ‘already’ assembles the programming with advertisements.”); see Pet. 38 (referring to Cristofalo’s “targeted advertising”). We tend to agree at this stage. Thus, we question Petitioner’s rationale to combine Cristofalo with Marcus ’904.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[n]o express constructions are required.” Pet. 9. Patent Owner also proposes no express constructions. We agree that no claim terms require construction at this stage.” slip op. at 7
Claim construction§ 103 obviousnesscites AlicePatents in suitUS 8,886,753 - Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01340 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”). We adopt Petitioner’s assessment at this stage. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’704 patent and the asserted prior art. However, our obviousness analysis would have been the same under either party’s assessment. See id. (“My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“On this record, we find Patent Owner’s references to Marcus156’s “exemplary methods” and systems to be non-limiting. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (internal quotation omitted). “Absent disclaimer or lexicography, the plain meaning of the claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). Patent Owner points us to no disclaimer or lexicography in the specification, including in Marcus156.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Patent Owner attacks Petitioner’s “post-hoc rationalization for its proposed modification,” namely “more efficient processing or ‘simplifying processing and communications.’” Prelim. Resp. 26 (citing Pet. 18–19).14 Patent Owner asserts, in part, that Whitehead’s design already permits the “real time or near-real time” assembly of a custom media channel, so “it would be superfluous to include the same information again in the custom channel request.” Id. at 27–28 (citing, e.g., Ex. 1003, 4:40–44, 8:45–51, 11:45–49). At this stage, we tend to agree with Patent Owner. Petitioner acknowledges that “[m]ixing server 130 creates custom media channel 170 in real time or near real-time” yet asserts a POSITA would have modified Whitehead to speed up this process. See Pet. 18. If Whitehead already processes in real time or near real time, it is unclear why a skilled artisan would have sped up that process. Thus, Petitioner’s rationale does appear to be superfluous and hindsight-based at this stage.” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 8,145,704 - PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. 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 ’078 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 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’428 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. 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 ’993 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - PTAB · Jan 29, 2025 · IPR2024-00842 · APJ Michael L Woods · IPR · Institution
The Board instituted review of claims 1–29 based on a reasonable likelihood of prevailing and granted EndyMed’s motion to join the ’386 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, the underlying premise of Serendia’s arguments here and in the ’386 IPR remains substantially the same. Thus, for the same reasons discussed in our decision instituting the ’386 IPR, we find that EndyMed demonstrates a reasonable likelihood of prevailing with respect to at least one of challenged claims 1–29 of the ’836 patent. See ’386 IPR, Paper 18. That is not to say, however, that Serendia may not ultimately persuade us at trial of the deficiency of EndyMed’s showing based on a preponderance of the evidence.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“evidences nonobviousness for four different patents. In this situation, a presumption of nexus is appropriate only if patent owner demonstrates that the claims of all four patents “generally cover the same invention.” See Fox Factory, 944 F.3d at 1377 (“Where a product embodies claims from two patents, a presumption of nexus can be appropriate only if the claims of both patents generally cover the same invention.”). “The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.” Id. at 1378 (citation omitted). “In such situations, the patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Id. (citation omitted). Here, Serendia does not demonstrate that the four different patents cover the same invention. See Prelim. Resp. 59–74. Indeed, Serendia does not address U.S. Patents 9,775,774, 9,320,536, and 10,869,812 at all. See id. That Serendia separately sought patent protection for each of these four patents suggests that these patents do not generally cover the same invention. Cf Fox Factory, 944 F.3d at 1378 (“The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.”). We made a similar determination in the ’386 IPR. See, e.g., ’386 IPR, Paper 18 at 38 (“Patent Owner fails to set forth which patents ‘generally cover’ the Sylfirm X device.” (citations omitted)).” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We disagree with Serendia. EndyMed need not justify its delay where, as here, EndyMed satisfies the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely. Serendia also argues that joinder should be denied due to duplicative efforts with the parallel Delaware litigation, which involves the same parties and patent as here. See PO Opp. 3–4. That argument fails for the simple reason that EndyMed submits a Sotera stipulation, agreeing not to pursue in the Delaware litigation the same grounds that are asserted in the petition here or any grounds that reasonably could have been raised here. See Pet. Reply 1–2. A Sotera stipulation mitigates concerns of duplicative efforts, and we decline to discretionarily decline institution where a petitioner makes such a stipulation. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Director Memo”), at 3, 7–8. Thus, we will not discretionarily deny the petition or motion for joinder on the basis of the parallel Delaware litigation.8” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the joinder requirement of filing the petition within one month of our institution of trial in the ’386 IPR. See 37 C.F.R. § 42.122(b); see also 37 C.F.R. §§ 1.7(a), 42.1(a). Indeed, by rule, EndyMed could not have filed the instant petition prior to institution of the IPR it was seeking to join. See 37 C.F.R. § 42.122(b) (“Any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.”) (emphasis added). And, although there is a one-year statutory bar from the date of service of a complaint alleging infringement for requesting inter partes review, that bar does not apply to a request for joinder. See 35 U.S.C. § 315(b). Thus, despite being filed more than one year from the service date of Serendia’s complaint alleging infringement of the ’836 patent, EndyMed’s petition and motion are nonetheless timely.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,480,836 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 22, 2025 · IPR2024-01191 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–28 on all asserted grounds, finding a reasonable likelihood that Wiz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“After Patent Owner filed its Preliminary Response, however, Petitioner filed a stipulation consistent with the stipulation filed in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A) (“Sotera”). Ex. 1107. On June 21, 2022, the Director issued guidance (“Director Guidance”) in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors.6 Notably, the Director stated that the Board “will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the [Patent Trial and Appeal Board].” Director Guidance, 3. With this guidance in mind, we decline to exercise our discretion to deny institution under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1107.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were 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) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’326 patent. See Prelim. Resp. 63 (citing Ex. 1004, 109, 138). The Examiner, however, did not meaningfully address Veselov during prosecution of the ’326 patent. For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’326 patent. See id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’326 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers essentially the same assessment of the level of skill in the art as Petitioner, arguing the following: a [POSITA] as of the ’326 patent’s earliest priority date (January 28, 2019), would have had at least a Bachelor’s degree in computer science, computer engineering, or a related field, and two years of industry experience or academic research experience in cyber security and virtualization, including cloud computing cybersecurity. Additional education can compensate for less experience and vice-versa. Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 1–12, 19–26). We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment. Petitioner’s assessment is supported by the testimony of Dr. Stavrou and it is consistent with the ’326 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,775,326 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 22, 2025 · IPR2024-01190 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 would be obvious over Veselov and Mohanty.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued guidance (“Director Guidance”) in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors.7 Notably, the Director stated that the Board “will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the [Patent Trial and Appeal Board].” Director Guidance, 3. With this guidance in mind, we decline to exercise our discretion to deny institution under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1106.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were 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) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’926 patent. See Prelim. Resp. 61 (citing Ex. 1004, 138, 142). The Examiner, however, did not meaningfully address Veselov during prosecution of the ’926 patent. For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’926 patent. See id. It is also undisputed that the Examiner did not consider the other references that serve as the basis of Petitioner’s asserted obviousness grounds (i.e., Mohanty, Ranum, Seo, and Hutchins) during prosecution. Nor did the Examiner have the benefit of Dr. Stavrou’s testimony regarding the teachings of Petitioner’s asserted references. Accordingly, we are not persuaded by Petitioner’s arguments that the Petition presents substantially the same art and arguments that were considered previously during prosecution of the ’926 patent.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j. Summary as to Claim 1 For the above reasons, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combination of Veselov and Mohanty.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner offers essentially the same assessment of the level of skill in the art as Petitioner, arguing the following: a [POSITA] as of the ’926 patent’s earliest priority date (January 28, 2019), would have had at least a Bachelor’s degree in computer science, computer engineering, or a related field, and two years of industry experience or academic research experience in cyber security and virtualization, including cloud computing cybersecurity. Additional education can compensate for less experience and vice-versa. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 1–13, 19–26). We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment. Petitioner’s assessment is supported by the testimony of Dr. Stavrou and it is consistent with the ’926 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,740,926 - Wiz, Inc. v. Orca Security Ltd.InstitutedPTAB · Jan 16, 2025 · IPR2024-01109 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–23 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘PTAB’)] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Id. at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1093.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were 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) (Decision Denying Institution) (precedential). Patent Owner does not dispute that Veselov is the only reference that serves as the basis of Petitioner’s obviousness grounds that was considered during prosecution of the ’809 patent. See Prelim. Resp. 58–60; see also Pet. 7. The Examiner, however, did not meaningfully address Veselov during prosecution of the ’809 patent. See Pet. 7 (citing Ex. 1004, 73, 107– 115, 156–157, 181–182). For example, the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’809 patent. See id. It is also undisputed that the Examiner did not consider the other references that serve as the basis of Petitioner’s asserted obviousness grounds (i.e., Mohanty, Hutchins, and” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Ex. 1001, 9:48, 11:24, 12:16. Petitioner proposes we construe this term to encompasses two alternative approaches: (1) “direct analysis of the snapshot data”; and (2) “analysis of a VM instantiated from a snapshot.” See Pet. 10. Patent Owner disputes the second approach, but not the first. See Prelim. Resp. 9–12. For purposes of institution, we agree with Petitioner’s first alternative approach—“analyz[ing] the snapshot” encompasses “direct analysis of the snapshot data.” This construction finds support in the ’809 patent’s specification. See, e.g., Ex. 1001, 5:20–21 (“The snapshot is parsed and analyzed by the security system 140 to detect vulnerabilities.”), 5:37–40 (“[T]he security system 140 may be configured to match the application files, either directly (using binary comparison) or by computing a cryptographic hash against [a] database of files in vulnerable applications.”). Because, as we explain below, Petitioner’s obviousness analysis is sufficient under this first approach, we take no position on Petitioner’s second alternative approach, which Patent Owner disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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))). Pet. 8–10, we do not need to further construe the claims to determine whether to institute IPR. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Petitioner’s assessment—without the qualifier—is supported by the testimony of Dr. Stavrou and it is consistent with the ’809 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,726,809
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.