- PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - Google LLC v. Security First Innovations, LLCAll claims unpatentablePTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9
Patent outcomesUS 10,452,854 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,452,854 - 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
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.