- Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’378 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,378 - Google LLC v. DH International Ltd.InstitutedPTAB · Mar 24, 2025 · IPR2024-01322 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that claims 1, 10–12, and 19 are obvious over Mooney and over Mooney in view of Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, the Pre-Institution Reply, Pre-Institution Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’294 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’294 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“the claims nor the specification of the ’294 Patent require such a narrow reading of the term ‘activation cue’” as that proposed by Patent Owner. Reply 1 (citing Prelim. Resp. 9–10). Operative claim language—“a cue receiver operatively linked to said electronic circuit for receiving an activation cue from a source external to said cellular phone”—does not limit “activation cue” to a predetermined bit sequence or predetermined indicator as argued by Patent Owner. Claim 1 further recites the “data conveyance switching element . . . being assigned a first state upon an activation cue having been received by said cue receiver,” which also does not limit “activation cue” to a predetermined bit sequence or predetermined indicator. Both parties, moreover, cite the same description of the structure and function of the “activation cue” in the ’294 patent: “This activation cue is in the form of a data communication of a specific type which will be recognized by electronic device 10 as an activation cue, for example a predetermined bit sequence.” Prelim. Resp. 22 (citing Ex. 1001, 9:24–27); Reply 1 (citing Ex. 1001, 9:24–27); Sur-Reply 1 (citing same). The recited “activation cue,” when read in context and in view of the” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner constructionDecided for petitioner
“for the recited “data conveyance switching element” pursuant to §112, sixth Petition characterizes the corresponding structure as “a physical structure, a virtual program, or both because the ’294 patent explains that a switching element ‘can be any type of device allowing data to be conveyed according to alternate data conveyance operations,’ such as ‘a series of instructions programmed onto [a] microchip’ or a ‘decisional logical circuit,’ and ‘can be a physical structure, a virtual program, or both.’” Id. (citing Ex. 1001, 9:28– 31, 9:40–41; Lipoff Decl. Ex. 1003 ¶ 64). The Petition identifies the claimed function as switching between inactive and activated states based on whether or not the cellular phone receives an activation cue. Id. (citing Ex. 1001, 2:4–9, 4:18–23, 5:48–53; Ex. 1003 ¶ 64).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction of an “external data exchange device” as a data transceiver coupled to a circuit that carries out the function of exchanging data. Prelim. Resp. 11 (citing Ex. 1001, 9:4–6, 12:62, 13:28, Figs. 1, 3, 4; Ex. 2001 ¶ 48); see Pet. 7–8 (citing Ex. 1001, 2:14–17, 4:7–14, 9:3–6; Ex. 1003 ¶¶ 67–68). Patent Owner states that “[a]n external data exchange device is not a transceiver but a device with a transceiver.” Prelim. Resp. 11 (citing Ex. 2001 ¶ 48). On this preliminary record, we need not construe “external data exchange device” to decide whether or not to institute. To the extent there is a dispute over the plain meaning of “external data exchange device,” the parties are invited to address it in detail in their briefs following institution. On the present record, we determine that no further construction of claim terms is necessary to determine whether to institute a trial in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are free to address any further claim construction issues bearing on this inter partes review following institution.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,022,294 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Mar 18, 2025 · IPR2024-01284 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’540 patent. We exercise our discretion to institute inter partes review and, as required, we do so as to all the challenged claims of the ’540 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“issued an order temporarily staying all deadlines and hearings scheduled in the matter.6 Ex. 1058, 1–2. The District Court’s order notes that Patent Owner asserts 8 patents in the litigation, that IPRs have been instituted on 4 of those patents covering 10 of the 14 claims asserted in the litigation, and that further consideration of a stay will depend upon whether IPRs are instituted on patents including the 4 remaining claims. Id. at 1, 3. The District Court also ordered the parties to update their positions on a stay within one week of a decision on institution. It is unclear if, and when, a new trial date would be set. In light of this stay, we determine that this factor weighs strongly against discretionary denial. 2.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Ex. 1051 ¶ 30. Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having reviewed the parties’ arguments we determine, as explained further below in our analysis of claim 1 (§ III.D.4.a), that an express construction of the term “file” is not necessary at this stage of the proceeding. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,310,540 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Mar 18, 2025 · IPR2024-01314 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“February 24, 2025, the District Court ordered all deadlines and hearings stayed pending further order of the court. See Ex. 1066. The District Court’s order notes that Patent Owner asserts 8 patents in the litigation, that IPRs have been instituted on 4 of those patents covering 10 of the 14 claims asserted in the litigation, and that further consideration of a stay will depend upon whether IPRs are instituted on patents including the 4 remaining claims. Id. at 1, 3. The District Court also ordered the parties to update their positions on a stay within one week of a decision on institution. It is unclear if, and when, a new trial date would be set. Thus, factors 1 and 2 weigh against exercising discretion to deny institution. The subject matter of the challenged claims is closely related to the subject matter of the claims of the patents in the previously instituted IPRs and the remaining pending petitions, as evidenced by the overlap of the asserted references and arguments advanced in these cases. As detailed in the substantive sections of this Decision, the Petition meets the standard for institution, i.e., there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the Petition. Under Fintiv factor 6, these circumstances weigh against exercising discretion to deny institution. In view of these circumstances, we determine that factors 1, 2, and 6 strongly weigh against exercising discretion to deny institution.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology. Pet. 7 (citing Ex. 1062, Sarhan Decl. ¶¶ 26–30). Petitioner adds that additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. Id. Patent Owner does not comment specifically on the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of an 4U.S. Patent Publication No. 2004/0008255 A1 (Ex. 1019) 5 U.S. Patent Publication No. 2002/0191952 A1 (Ex. 1009) 6 U.S. Patent 5,982,418 (Ex. 1020) 7 Another Declaration of Dr. Sarhan has also been made of record in this proceeding. See Ex. 1003. This Decision distinguishes references to the Sarhan Declarations by Exhibit number. ’910 patent and the references, we apply it for purposes of this Decision. slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“A. A computer processor configured to Petitioner notes that in the parallel litigation Patent Owner contends that this term is not a means plus function limitation. Pet. 9. Petitioner states that for purposes of the petition it has applied means plus function and non-means plus function interpretations to this limitation. Id. For purposes of this Decision, we need not construe this claim limitation. B. File In this proceeding, Petitioner does not propose a construction of the term “file.” See Pet. 9. Patent Owner does not propose a construction of “file” but, nonetheless, states that “Petitioner’s vague and unduly broad definition of ‘file’ is not only contradicted by the prosecution history, but also the extrinsic evidence it relies upon.” Prelim. Resp. 5 (citing Pet. 10– 12). Patent Owner reserves the right to present claim constructions arguments if trial is instituted. Id. at 6. For purposes of this Decision, we address the meaning of “file” in the context of the parties’ substantive arguments and do not articulate a specific construction. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c) Claim 1 Analysis Petitioner has demonstrated that, contrary to Patent Owner’s arguments, Yerazunis discloses write protecting a segment of the buffer. Yerazunis explicitly states that “[upon] a firing event, specified frame data associated with that firing event both before and after the event is preserved and cannot be overwritten as a result of further use of the gun or subsequent of memory to a second portion of memory to avoid overwriting the data in the first portion of memory upon the occurrence of a second trigger event is an effective approach to designating the first portion of memory as write protected. As Petitioner points out, an ordinarily skilled artisan would have understood from Yerazunis that retrieving video data for gun firing events necessitates the ability to locate the relevant video data within the buffer and that using pointers in a table to index the data allows for its later retrieval. Pet. 25 (citing Ex. 1062, Sarhan Decl. ¶ 372). We find unavailing Patent Owner’s argument that Yerazunis’ disclosure of a purge button to erase the contents of the circular buffer is further evidence that that entire buffer contents is protected and unprotected as a whole. Prelim. Resp. 30 (citing Ex. 1017, 9:47–51). It is unclear how providing an “optional” purge feature that erases the contents of the circular buffer and captured still images a “user does not desire to retain” supports Patent Owner’s argument that Yerazunis does not disclose write protecting segments of the buffer associated with a trigger event. Ex. 1017, 9:49–53. Inclusion of this feature further supports Petitioner’s argument, as the segments of a circular buffer associated with an event are not overwritten, unless the user invokes the purge feature to erase the contents of the circular buffer. Also unavailing is Patent Owner’s argument that video data preservation in Yerazunis “is a step that occurs after, not as part of, the step of ‘continu[ing] to record for a brief interval.’” See Prelim. Resp. 30–31. Claim 1 is an apparatus claim and does not recite “continuing to record for a brief interval.” See Ex. 1060, 12:19–47 (claim 1). Claim 1 recites “a computer processor configured to . . . continuing to record the sensor data in designated for saving.” Ex. 1060, 12:22, 34–36. Yerazunis discloses that upon detection of a trigger event a predetermined number of frames, e.g., 2 frames, are stored in successive frame locations within the circular buffer. Ex. 1017, 8:26–32; 12:14–28. Yerazunis further discloses that “any desired percentage of frames may be captured prior to or after the trigger event by specifying how many frames are to be captured and stored after the trigger event.” Id. at 8:39–42.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,965,910 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - PTAB · Aug 14, 2024 · IPR2024-00207 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–25, 38, and 39 on all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’249 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The mixing operation described in Botha appears materially different than that described in Löppönen. The Office acknowledged in allowing the ’249 patent that in Löppönen’s mixed stream, “the user still hears only one group at a time.” Ex. 1003 at 32, 76–77. That does not appear to be the case in Botha. In Botha, the combination of a variety of audio streams [occurs] in such a way that each participant will hear all other participants’ voices except their own. This is known as an ‘N minus l’ mix- where ‘N’ represents the sum of all audio streams entering a[t] the core logic of the invention, and the ‘minus l’ portion refers to the subtraction of the current participant’s stream from the stream returned to them. Ex. 1004, 10:35–43. 3. Conclusion Based on the current record before us, we determine that Petitioner is not asserting the same or substantially the same art or arguments previously presented to the Office with respect to Botha (Ground 1). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).3 E. Prior Art References” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have had at least a B.S. degree in electrical engineering, computer science, or a similar field, plus approximately three years of industry in networking or communication systems, in particular address interoperability between different types of networks and satellite communications. Pet. 7–8 (citing Ex. 1002 ¶ 68). Patent Owner “does not dispute the proposal provided by Petitioner as to who would qualify as a POSITA.” Prelim. Resp. 6. pre-AIA law applies. See Prelim. Resp. Accordingly, we cite to pre-AIA § 103(a). We regard Petitioner’s definition as consistent with the ’249 patent and the asserted prior art, and the definition is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that we can determine whether to institute trial without having to resolve Petitioner’s assertion of indefiniteness. See Samsung, 948 F.3d 1355 (question of indefiniteness “is simply another ground on which the claims might be challenged in an appropriate forum,” and “does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds”). Independent claim 25 is directed to a system for providing a push-to- talk proxy media service, reciting a “means for receiving,” a “means for mixing,” and a “means for transmitting,” among other things. Ex. 1001, 25:51–64. Petitioner identifies the recited functions and provides corresponding structures for these “means for” limitations recited by claim 25 pursuant to 35 U.S.C. § 112 ¶ 6. Pet. 10–11. Patent Owner “maintains that the proposed constructions for these three claim terms are overly limiting since the specification provides support for a broader range of structures, at the least, and does not concede to the constructions provided by Petitioner.” Prelim. Resp. 6. It is not necessary for us to resolve the claim construction issues identified by the parties in order for us to determine whether to institute inter partes review of the ’249 patent. Accordingly, for purposes of this Decision and based upon the preliminary record, we decline to expressly construe any of the claim terms at this point in the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). This preliminary Decision, however, does not prevent the parties from proposing, presenting evidence, or arguing a same or different construction of the claims during trial. The parties are encouraged to present their claim construction arguments and evidence as permitted by our rules.2 A final claim construction will be determined after the close of all the evidence and after any oral hearing in this matter. D. Discretionary Denial – 325(d)” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,145,249 - Databricks, Inc. v. R2 Solutions LLCInstitution deniedPTAB · Jun 11, 2024 · IPR2024-00659 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Pike, Pike with Chowdhuri, or Pike with Chowdhuri and MacLeod rendered claims 1–46 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner does not demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’610 patent. Accordingly, we do not institute an inter partes review of claims 1–46 of the ’610 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner relies on conclusory reasoning grounded in hindsight to assert a POSITA would have found it obvious to include file names to identify the data in each of Pike’s input files “because it would have allowed for locating that data group in Pike’s system and understanding the data in that file.” Id. at 18 (citing Ex. 1005 ¶ 93).13 Petitioner then makes the leap that, by understanding the data in an input file, a MapReduce programmer would have had reason “to identify input files and write ‘application-specific’ map and reduce functions on those files.” Id. at 18–19 (citing Ex. 1002, 10:1–7, 11:28–47, 14:12–27; Ex. 1005 ¶ 93). The difficulty with Petitioner’s position is that neither Pike nor other cited references disclose, teach, suggest, or otherwise provide motivation to write application-specific map and reduce functions that process each input file by identifiable schema or data type, i.e., by “data group” as recited in claim 1. Pike teaches application-specific programming “to process the input data one record at a time” or “to generate its output data in the form of key/value pairs,” nothing more. Ex. 1002, 7:31–36; see Pet. 29 (citing same); Prelim. Resp. 40–41, 50–51, 56 (citing same). Petitioner’s posited file names for Pike’s input files, moreover, could not serve as the claimed “data group” mechanism to identify the data in each input file by schema (or data type) for separate map and reduce processing. Each of Pike’s 13 Linn Declaration paragraph 93 is substantially identical to Petitioner’s argument and does not add any further insight or analysis on this point. data blocks can include data from more than one input file, a portion of one input file, or an entire input file. Ex. 1002, 6:55–7:6; see also Prelim. Resp. 47 (“Pike’s ‘data blocks’ (purported ‘partitions’) can be entire ‘input files,’ parts of ‘input files,’ or parts of multiple ‘input files’”). Therefore, a file name for one input file could not uniquely identify all of the data within a given data block, which could include data from different input files. Id. We agree with Patent Owner’s reasoning and argument on this point as well. In sum, Petitioner fails to show sufficiently that a POSITA would have had reason or motivation to use input file names in Pike as “data group” identifiers, as recited in claim 1 of the ’610 patent. See KSR, 550 U.S. at 418 (obviousness requires “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable
“We further agree with Patent Owner that Petitioner’s asserted motivation for tracking processed data “derived from a particular [input] file” to improve efficiency “by enabling a data set to be selectively reduced after it is mapped” (Pet. 35–36 (citing Ex. 1005 ¶ 119)), is speculative hindsight-based reasoning. Petitioner’s posited motivation is grounded in benefits residing in the ’610 patent, not in the prior art or knowledge of a POSITA. Prelim. Resp. 48. Petitioner’s evidence—Dr. Linn’s naked opinion that a POSITA “could” have used the identification of processed output file data as “derived from a particular file” to selectively reduce intermediate data (Ex. 1005 ¶ 119)—is unpersuasive for the reasons given above and legally insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“reasonable likelihood of prevailing in its challenge to the patentability of any of claims 1–46 of the ’610 patent. Therefore, we deny institution of inter partes review of the challenged claims. We need not address Patent Owner’s argument for discretionary denial under 35 U.S.C. § 325(d) in view of our decision denying institution on the merits.” slip op. at 50
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,190,610 - Cloudera, Inc. v. R2 Solutions LLCInstitution deniedPTAB · Jun 11, 2024 · IPR2024-00303 · APJ Brian P Murphy · IPR · Institution
The Board denied institution on the merits, finding that Pike and Pike with Chowdhuri, alone or with MacLeod, did not show a reasonable likelihood of rendering claims 1–46 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner does not demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’610 patent. Accordingly, we do not institute an inter partes review of claims 1–46 of the ’610 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“someone having “at least a bachelor’s degree in computer science or similar field, and approximately two years of industry or academic experience in a field related [to] performing data analytics and/or related data processing tasks.” Pet. 9 (citing Ex. 1005 ¶¶ 67–69; In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Petitioner further asserts that work experience can substitute for formal education and additional formal education can substitute for work experience. Id. Patent Owner does not contest Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 14.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“13–31; Ex. 1008, 10–19); Prelim. Resp. 10 n.1, 17 (citing Pet. 10; Ex. 1007, 24– 25); see also Paper 7, 2 (Updated Mandatory Notices).10 The parties each provided proposed constructions of “data group” and related arguments to the court. Id. The district court construed “data group” as “a group of data and a mechanism for identifying data from that group (e.g., a group identifier).” Ex. 1007, 23–25. Having reviewed the district court’s construction of “data group,” and given the parties’ application of that construction here, we apply the district court’s construction of “data group” for purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (claim terms “need only be construed ‘to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s argument explicitly and implicitly relies on the teachings of the ’610 patent, not Pike or some other MapReduce reference or teaching, for the proffered motivation that a “POSITA would have understood,” “recognized,” or “found it obvious to implement” Pike’s MapReduce system to include input file names as the “data group” identifiers in claim 1 of the ’610 patent. See Pet. 17–18. Petitioner relies on conclusory reasoning grounded in hindsight to assert a POSITA would have found it obvious to include file names to identify the data in each of Pike’s input files “because it would have allowed for locating that data group in Pike’s system and understanding the data in that file.” Id. at 18 (citing Ex. 1005 ¶ 93).14 Petitioner then makes the leap that, by understanding the data in an input file, a MapReduce programmer would have had reason “to identify input files and write ‘application-specific’ map and reduce functions on those files.” Id. (citing Ex. 1002, 10:1–7, 11:28–47, 14:12–27; Ex. 1005 ¶ 93). The difficulty with Petitioner’s position is that neither Pike nor other cited references disclose, teach, suggest, or otherwise provide motivation to write application-specific map and reduce functions that process each input file by identifiable schema or data type, i.e., by “data group” as recited in claim 1. Pike teaches application-specific programming “to process the input data one record at a time” or “to generate its output data in the form of key/value pairs,” nothing more. Ex. 1002, 7:31–36; see Pet. 27 (citing same); Prelim. Resp. 39–40, 49–50, 55 (citing same).” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,190,610 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2022 · IPR2021-01520 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of inter partes review of claims 1, 2, 4, 9-11, 13, 18, and 19 under § 325(d), finding the same art had been evaluated and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“If “either condition of first part of the framework is satisfied,” we must then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9.” slip op. at 16
- Other 314aNot reached
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 314(a) or § 325(d) to deny institution. See Prelim. Resp. 13–43; Prelim. Sur-reply 1–8; 35 U.S.C. §§ 314(a), 325(d). Petitioner argues that we should decline to exercise our discretion to deny institution. See Pet. 8–12; Prelim. Reply 1–10. For the reasons explained below, we exercise our discretion under § 325(d) to deny institution. Because we exercise our discretion under § 325(d) to deny institution, we do not reach discretionary denial under § 314(a).” slip op. at 15
Discretionary denialPatents in suitUS 9,686,193
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.