- Tableau Software, LLC v. Icharts LLCInstitutedPTAB · May 14, 2025 · IPR2024-01387 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–16 on all grounds asserted in the Petition, based on 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
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art, would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services. The [person of ordinary skill in the art] would have, therefore, been familiar with client-side scripting technologies, such as JavaScript and/or ActionScript. The [person of ordinary skill in the art] would have further worked as part of a multidisciplinary team and drawn upon not only her own skill but of others on the team, e.g., to solve a given problem. Pet. 4 (citing Ex. 1003 ¶ 70). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. 31. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’892 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in deciding whether to institute trial.” slip op. at 8
- Expert testimonyPetitioner expert creditedOther
“Mr. Schmandt testifies that a person of ordinary skill in the art “would have understood that the QlikView Manuals disclose interactive charts that retain interactivity when published or embedded . . . also because [such a person] would have known how QlikView was actively being used on different web applications,” including on an online Web Selector Tool. Ex. 1003 ¶¶ 355–359 (citing Exs. 1024–1027). On the other hand, Dr. Miller testifies that “the QlikView clients must establish and maintain a connection to the QlikView Server to display and interact with the QlikView documents given that those documents are hosted on the QlikView Server.” Ex. 2001 ¶ 216. For the purposes of institution, we find Mr. Schmandt’s testimony persuasive because it is consistent with the disclosure of the QlikView Manuals discussed above. In contrast, Dr. Miller’s testimony, like Patent QlikView server to the recited claim limitations.10” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“h) Motivation to Combine the QlikView Manuals Petitioner argues that a person of ordinary skill in the art would have been motivated to combine the QlikView Reference Manual and the QlikView Server Reference Manual because they describe the same product suite and they cross reference one another. Pet. 58 (citing Exs. 1008, 1009; Ex. 1003 ¶¶ 294, 295). Patent Owner does not specifically respond to these arguments. See Prelim. Resp. Based on our review of the current record, at this stage of the proceeding, we determine that Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of the QlikView Manuals in the manner asserted by Petitioner, with a reasonable expectation of success.” slip op. at 22
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,271,892 - PTAB · Mar 28, 2025 · IPR2024-01505 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–8, 15, 17, and 19–25 because Petitioner showed a reasonable likelihood of proving obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (hereinafter “POSITA”) “would have had (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 19 (citing Ex. 1003 ¶¶ 37–39). Patent Owner states that it “has applied Petitioner’s POSITA for the sake of this Response.” Prelim. Resp. 33. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Creusere and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [1a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [1a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - PTAB · Mar 28, 2025 · IPR2024-01503 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 9–14, 16, 18, and 26–30 based on a reasonable likelihood of obviousness over Rusert and Zheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’833 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’833 patent on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“That specific claim language of association indicates a relationship between “the block” and the first spatial motion vector prediction candidate, that is more than how every single prediction candidate broadly may be regarded in general as related to the current block being processed, the block for which a motion vector prediction list is being generated. The modifier “associated with the first spatial motion vector prediction candidate” clearly modifies “the block” at issue here and cannot be discarded or ignored. Further, if “the block” refers to the block recited in limitation [9a], i.e., the current block being processed, then the modifying phrase “associated with the first spatial motion vector prediction candidate” would be superfluous and have no meaning, because “the block,” without the modifying phrase, would already derive its antecedent basis from “a block of pixels” recited in limitation [9a]. We decline to adopt a construction that reads out “associated with the first spatial motion vector prediction candidate.” Construing the claim according to what the claim language actually states, without excluding any part of the claim language recited, is more appropriate.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“particular teachings sought to be combined. Rather, it appears, according to Petitioner, anything in Nakamura properly can be combined with anything in WD4 simply because Nakamura is a proposal for the next draft version of new standard H.265, i.e., version 4, and WD4 is the resulting draft version 4 of H.265 after all the proposals had been considered. Pet. 65–66. Petitioner’s reasoning is flawed and based on mere speculation. Nakamura is not a proposal to revise or modify WD4. WD4 did not yet exist at the time the Nakamura proposal was made. Even if some suggestions of Nakamura made it into WD4, as Petitioner asserts (Pet. 65), i.e., spatial merge candidate positions unification, that does not mean one of ordinary skill in the art would have had reason to combine other teachings of Nakamura with particular disclosures of WD4. Even assuming Nakamura and WD4 have striking similarities in some way and also a common purpose to some general extent, that still does not mean everything in one is combinable with everything in the other, without specific consideration and discussion of what are proposed to be combined and in what manner. g. Preliminary Conclusion for Claim 9 For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 9 over Nakamura and WD4.” slip op. at 63
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We must grant or deny institution on both of Petitioner’s grounds. See 37 C.F.R. § 42.108(a). Petitioner has made a sufficient showing based on Rusert and Zheng for the Board to institute review, but not Nakamura and WD4. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. Rather, the benefits of holding a trial to resolve the Rusert-Zheng ground for which Petitioner has shown a likelihood of prevailing outweigh any theoretical burden of addressing the weaker Nakamura-WD4 ground, to the extent that the Examiner considered Nakamura and WD4. See Dril-Quip, Inc., v. FMC Tech., Inc., PGR2021- 00049, Paper 10 at 13–14 (PTAB Aug. 4, 2021) (declining to exercise discretion to deny institution under § 325(d) even though one asserted ground was “weak” on the merits). Thus, we do not exercise our discretion to deny institution based on § 325(d). 3. Conclusion We find that the same or substantially the same prior art or arguments, i.e., Rusert (Ex. 1004) and Zheng (Ex. 1005), previously were not presented to the Office. We need not proceed past the first stage of the Advanced Bionics framework. We decline to exercise discretion under § 325(d) to deny the Petition.” slip op. at 68
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,571,833 - PTAB · Mar 28, 2025 · IPR2024-01507 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 1–5, 7–15, and 17–20 on all petitioned grounds because Petitioner showed a reasonable likelihood of prevailing on claims 1 and 11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner applies Petitioner’s definition in its Preliminary Response. Prelim. Resp. 17. At this stage, we adopt Petitioner’s uncontested skill-level definition because it is consistent with the challenged patent and prior art of record and supported by Mark E. Crovella’s testimony. See Exs. 1003,2 1004, 1005. If the parties believe that the level of skill in the art would affect this case’s outcome, the parties must brief that issue.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We see no reason at this stage to restrict the recited processing elements to objects such as code or parameters. The claim itself does not explicitly define processing element as performing any operations. Rather, the processing element is acted upon in the determining and marshalling steps of claims 1 and 11. Because code or data can be determined or marshalled, the claim language indicates that data processing elements can be code or data.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage, we agree with Petitioner’s argument. See id. Specifically, we preliminarily construe “dynamic processing mechanism” as “a mechanism for processing data in real-time or near real-time.” See Section II.B.2 supra. And according to Foster, Streams analyzes and acts upon data “with low latency in close to or in real time.” Ex. 1004, 56–57, quoted in Pet. 25. Thus, Petitioner has shown that Streams is a “dynamic processing mechanism.” Pet. 24–25. As for the mechanism’s processing element, we disagree with Patent Owner’s proposed construction for “processing element” (see Section II.B.1. (Prelim. Resp. 33–35). For example, Patent Owner argues that Foster does not disclose a processing element that carries out processing (Prelim. Resp. 33) or that includes code or another computational element (id. at 34). But the claimed processing element is not limited in this way under the construction adopted in this decision. Rather, we construe processing element to mean “data to be processed.” See Section II.B.1 supra. Thus, we disagree with Patent Owner’s arguments about the claimed processing element. Prelim. Resp. 33–35.” slip op. at 19
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,996,693 - Deltran USA LLC v. The Noco CompanyInstitutedPTAB · Mar 19, 2025 · IPR2024-01219 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR of claims 1–11 on all petitioned 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
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“of the litigation pending resolution of this proceeding,” was not entirely accurate as of the time of the filing of Patent Owner’s Preliminary Response.12 Id. at. 19. The district court granted a stay in the parallel litigation on December 18, 2024—5 days before the Preliminary Response was due. Ex. 3001 (“Order”). According to the district court, “On balance, . . . staying [the parallel litigation] promotes judicial efficiency and is not unduly burdensome or prejudicial to NOCO.” Id. at 7.” slip op. at 14
- PTAB / AIA Trials › §315(e) estoppelNot reached
“We agree with Patent Owner that Petitioner has not demonstrated sufficiently that collateral estoppel should apply here as to the “USB port.” Prelim. Resp. 13–14. But, Petitioner does not appear to be requesting collateral estoppel with respect to the “USB port.” Instead, Petitioner argues there is no dispute that the claim limitations 1[PRE], 1(A), 1(D)–1(G) were fully litigated in IPR2020-00944—identifying each limitation of claim except those with a “USB port.” Pet. 35, 37, 42, 43, 46, 48. Petitioner also appears to argue collateral estoppel precludes Patent Owner from disputing “the Board’s findings regarding the prior art and printed publication status of Epower-20 and Epower-21.” Id. at 30. In its Preliminary Response, Patent Owner does not dispute that the above-identified limitations (i.e., limitations 1[PRE], 1(A), 1(D)–1(G)) were fully litigated nor does Patent Owner dispute that Epower-20 and Epower-21 are prior art printed publications. See generally Prelim. Resp. Because Patent Owner’s arguments, at this stage of the proceeding, do not implicate collateral estoppel, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here. The parties are encouraged to further develop this issue over the course of trial including, such as, questions such as whether estoppel should be applied on a limitation by limitation basis, claim by claim basis, or otherwise.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” Prelim. Resp. 22. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’203 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’203 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - PTAB · Mar 7, 2025 · IPR2024-01176 · APJ Jason M Repko · IPR · Institution
Instituted IPR of claims 1–23 on all petition grounds; the Board found a reasonable likelihood of success on at least one claim based on MPEG-1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the ’148 Patent would have had a (1) Bachelor’s degree in Electrical or Computer Engineering, Computer Science, or a comparable field of study such as Physics, and (2) approximately 2-3 years of practical experience with video and/or image processing or coding. More education could substitute for experience, and vice versa. Pet. 5–6 (citing Ex. 1003 ¶¶ 23–24). Patent Owner applied Petitioner’s definition in the Preliminary Response. Prelim. Resp. 16 (Pet. 5–6). At this stage, we adopt Petitioner’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’148 patent and the asserted prior art and (2) it is supported by the testimony of Dr. Eli Saber.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“For purpose of institution, we preliminarily determine that claim 1 requires a sequence-level parameter. The claims themselves provide “substantial guidance” regarding the meaning of claim language. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Here, claim 1 recites that the level is for encoding a “sequence.” Ex. 1001, 25:56–60. Claim 1 expressly recites that “the digital video sequence compris[es] a number of frames.” Id. at 25:43–44. In this way, claim 1 defines a sequence to exclude a single picture. This reading is consistent with the specification’s focus on a sequence-level solution. According to the ’148 patent, “The present invention improves prior art solutions for indicating QP related information by introducing a sequence level QP” (SQP). Id. at 11:25–27 (emphasis added). Indeed, Petitioner acknowledges that the SQP is the purported improvement. See Pet. 5. Patent Owner agrees. See, e.g., Prelim. Resp. 8–9, 25–26. Claims are not normally interpreted “in a way that excludes embodiments disclosed in the specification.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). A trial could produce additional evidence that may support a determination in the Final Written Decision that defining a picture-by-picture quantization level is somehow “for use in encoding of the digital video sequence.” But, at this stage, the parties have given us little reason to adopt such a construction. There is no dispute that H.263 signals PQUANT at the Picture layer. Pet. 51; Prelim. Resp. 25. Indeed, the basis for Petitioner’s challenge is that PQUANT defines the quantizer for a picture and is updated for GOBs or macroblocks within the picture. Pet. 53. We disagree with the interpretation used in Petitioner’s challenge: a picture-layer quantization parameter falls within the scope of the claim. Id. at 51. Rather, for the reasons discussed above, we preliminarily determine that the claims require a sequence-level parameter. And Petitioner has not sufficiently explained why PQUANT is a sequence-level parameter. Thus, we cannot conclude that Petitioner has shown a reasonable likelihood of prevailing in its challenge to claim 1 with respect to H.263. See id.; Prelim. Resp. 25.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,175,148 - PTAB · Mar 6, 2025 · IPR2024-01223 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).” slip op. at 5
- Parallel petitionsNot reached
“B. Denial Based on Multiple Petitions Patent Owner asserts we should deny the petition in IPR2024-01222 because it is one of two petitions challenging the same claims of the ’389 patent. See Paper 7, 3. Patent Owner does not, however, argue we should deny the Petition in this case. See id. (arguing that “to the extent a trial is warranted, the Board should institute . . . [only] the IPR2024-01223 petition.”). Because Patent Owner contends only that we should deny the petition in IPR2024-01222, we do not address that issue here.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“C. Claim Construction 1. “depositing by shadow mask, sputtering, ink jet deposition, screen printing evaporation” Claim 40 recites “wherein the step for selectively depositing at least one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 15 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 6–7. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. 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§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Mar 6, 2025 · IPR2024-01222 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 over all petitioned grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“has not requested a stay and there is no evidence the district court would likely grant one. Prelim. Resp. 64. We decline to speculate about how the District Court might rule on a motion that has not been filed. On this record, the first factor is neutral.” slip op. at 6
- Parallel petitionsDecided for petitioner
“of two petitions challenging the same claims of the ’389 patent. See Paper 7, 2. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Here, there is such a dispute because even though the ’389 patent was filed on May 2, 2002 and does not claim priority to any earlier application, as noted above, Patent Owner contends that some of the challenged claims are entitled to an earlier priority date. See Prelim. Resp. 6–14. Given this apparent priority dispute, we agree with Petitioner that two petitions—one asserting prior art that is vulnerable to the priority dispute and one asserting art that is not—are justified. See Paper 3, 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary 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.” 35 U.S.C. § 314(a). For the reason below, we conclude there is a reasonable likelihood that Petitioner would prevail in demonstrating at least one of the challenged claims is unpatentable. Pursuant to § 314, we hereby institute an inter partes review to the challenged claims of the ’389 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 10 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 18–19. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Feb 18, 2025 · IPR2024-01187 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, 8–11, and 16 on all asserted grounds, finding a reasonable likelihood that Hanamura renders claim 16 obvious.
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). Statute 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.” 35 U.S.C. §314(a). For the reasons explained below, we determine that Petitioner has shown that there is a reasonable likelihood of prevailing with respect to at least one challenged claim.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“district court proceeding. See supra § I.C. In its Preliminary Response, Patent Owner presents argument regarding the Fintiv factors and urges the Board to exercise its discretion under 35 U.S.C. § 314(a) to deny institution. Prelim. Resp. 43–46. Subsequent to the Preliminary Response, Petitioner filed its Preliminary Reply as well as a stipulation. The Preliminary Reply provides that “[i]f the Board institutes this IPR, Defendants in Pictiva Displays Int’l Ltd. v. Samsung Elecs. Co., No. 2:23-cv-0495 (E.D. Tex.), stipulate not to pursue invalidity defenses based on grounds that were raised or reasonably could have been raised in this IPR.” Reply 1. Similarly, the stipulation provides as follows: Defendants hereby stipulate that, if the Patent Trial and Appeal Board institutes an inter partes review proceeding for U.S. Patent No. 9,257,492 on the grounds presented in the petition in IPR2024-01187, then Defendants will not pursue an invalidity defense in this case that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating requests for discretionary denial, the Board must determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on both grounds. See SAS Q&As, D1 (USPTO June 5, 2018)6 (cited with approval in Boehringer Ingelheim Animal Health Usa Inc., v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (Feb. 24, 2023) (Director Review) at 7–8 n. 3). “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics at 9. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. While prior art similar to one reference presently relied upon in Ground I was considered during prosecution, Patent Owner does not contend that the asserted references in Grounds II or III are the same or cumulative of art that was considered during prosecution. Because it 6 www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf is undisputed that two of the three asserted grounds do not implicate § 325(d), on balance, we determine that the Petition does not raise the same or substantially the same prior art previously presented to the Office. See Asetek Danmark a/s v. Coolit Sys., Inc., No. IPR2020-00825, Paper 12 at 15 (PTAB Oct. 13, 2020) (Decision on Institution) (determining to institute where, “viewing the Petition as a whole, we find that only two of the six asserted grounds . . . implicate § 325(d).”). As a result, we decline to exercise our discretion under section 325(d) to deny institution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical Engineering, Physics, or a comparable field of study, and at least three years of research or industrial experience with semiconductor (organic or inorganic) optoelectronic devices and/or lighting or displays. An individual with additional education could have less research or industrial experience and vice-versa. Pet. 9. For purposes of institution, Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 6 (“Solely for purposes of this Preliminary Response, Pictiva applies the skill level proposed by Petitioner.”). Accordingly, for purposes of institution, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,257,492 - PTAB · Feb 12, 2025 · IPR2024-01140 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–51 and all petition grounds, finding a reasonable likelihood that claims 1–20, 22–42, and 44–51 are obvious over TML6 and Fandrianto, and claims 21 and 43 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Absent specific evidence, the Board typically “will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even assuming that evaluating the summary of TML6 in the challenged patent’s background were the same as evaluating the TML6 code, Petitioner has shown under Becton, Dickinson factors (e) and (f) that the Office erred by overlooking the TML6-Fandrianto combination for the reasons discussed below in the analysis of Petitioner’s challenges. See infra Section II.E. That is, we disagree with Patent Owner that Petitioner has failed to meet its burden. Prelim. Resp. 36–37. Thus, none of Becton, Dickinson factors (c), (e), and (f) weigh in favor of denying the Petition under § 325(d). 4. Conclusion We do not exercise our discretion to deny the Petition under § 325(d).” slip op. at 16
- Skill levelOther
“Patent Owner argues that a person of ordinary skill in the art “would be an electrical and/or computer engineer with one to two years of experience relating to video coding hardware and/or software.” Prelim. Resp. 26. We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 27. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,280,599
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.