• Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20

  Patent outcomesUS 8,350,294 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,350,294
• Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentable
  PTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61

  • Skill levelSkill level board ownOther

    “Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21

  Patent outcomesUS 11,293,142 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,293,142
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this 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)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. 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))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 12, 2025 · IPR2024-01058 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted § 103 combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 137–144. The reason Petitioner’s reliance on paragraph 72 of Wang777 is unavailing is because we are not persuaded that it discloses or suggests using two different content identifiers to identify a channel. When viewing the cited portions of that paragraph in the proper context of what Wang777 teaches as a whole (as we are required to do), we are not persuaded a skilled artisan would understand that the disclosed additional and different content identifiers in the alleged play stream are being used to identify a channel.” slip op. at 21

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “claims issued in the ’849 patent. Pet. 40–103. Patent Owner contends that 35 U.S.C. § 325(d) applies to this case and that we should discretionarily deny institution. Prelim. Resp. 7–19. Patent Owner also asserts that Petitioner’s challenges are deficient under § 314(a); in particular, Patent Owner disputes the sufficiency of Petitioner’s evidence to show the prior art discloses or suggests claim elements 1.3, 6.3, and 10.3 of the independent claims. Id. at 20–62. Although Patent Owner’s arguments applying § 325(d) and Advanced Bionics, 4 U.S. Patent Application Publication No. US 2004/0260682 A1, published December 23, 2004 (“Herley”) (Ex. 1011). 5 U.S. Patent Application Publication No. US 2005/0193016 A1, published September 1, 2005, filed February 17, 2005 (“Seet”) (Ex. 1012). 6 U.S. Patent Application Publication No. US 2002/0116195 A1, published August 22, 2002 (“Pitman”) (Ex. 1013). 7 U.S. Patent Application Publication No. US 2003/0018709 A1, published January 23, 2003 (“Schrempp”) (Ex. 1014). 8 U.S. Patent Application Publication No. US 2003/0086341 A1, published May 8, 2003 (“Wells”) (Ex. 1015). Paper 6, (PTAB Feb. 13, 2020) (precedential) are sound, we decline to exercise our discretion. Nevertheless, as discussed below, our merits analysis also leads to denial of the Petition because the cited evidence fails to persuade us that Petitioner is reasonably likely to prevail on any claim challenged.” slip op. at 7

  • Skill levelSkill level board ownOther

    “We agree with Patent Owner that a person can qualify as a skilled artisan based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’849 patent. We disagree, however, that industry experience with ACR systems is required to qualify as a skilled artisan. The ’849 patent describes a media usage monitoring and measurement method that relies on “known content recognition methods,” including known ACR. Ex. 1001, code (54), 5:48–54. The claimed invention relates to analyzing sample sequence data to enhance content identification and to establish channel identification. Id. at code (57), 15:14–32 (claim 1). The ’849 patent relies upon known ACR systems, but does not claim a new method of content recognition such that industry experience designing or implementing ACR systems is required. We accept that such experience may assist in providing relevant industry experience. For these reasons, we determine that a skilled artisan would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a skilled artisan based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 10

  • Expert testimonyPetitioner expert discountedOther

    “arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 137–144.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,719,849
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 12, 2025 · IPR2024-01055 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “partes review. 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we do not institute an inter partes review because the information presented in the Petition, in view of the Preliminary Response, does not show that Petitioner is reasonably likely to prevail with respect to at least 1 of the claims challenged.” slip op. at 2

  • Skill levelSkill level board ownOther

    “We agree with Patent Owner that a person can qualify as a skilled artisan based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ‘622 patent. We disagree, however, that industry experience with ACR systems is required to qualify as a skilled artisan. The ‘622 patent describes a media usage monitoring and measurement method that relies on “known content recognition methods,” including known ACR. Ex. 1001, code (54), 5:38–44, 5:59–6:13. The claimed invention relates to analyzing sample sequence data to enhance content identification and to establish channel identification. Id. at code (57), 14:37–51 (claim 1). The ‘622 patent relies upon known ACR systems, but does not claim a new method of content recognition such that industry experience designing or implementing ACR systems is required. We accept that such experience may assist in providing relevant industry experience. For these reasons, we determine that a skilled artisan would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a skilled artisan based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 10

  • Expert testimonyPetitioner expert discountedOther

    “arguments presented by both parties, we find Petitioner’s evidence to be insufficient to carry its burden of showing Wang777 discloses or suggests claim elements 1.3, 6.3, and 10.3. More specifically, we find that Petitioner does not present persuasive evidence that Wang777 discloses or suggests the use of “a sequential order of at least two different obtained content identifiers in the play stream to identify a channel corresponding to the data samples.” Furthermore, Petitioner’s declarant, Dr. Russ, adds little, if any, persuasive value because his testimony is almost indistinguishable from Petitioner’s argument in the Petition and, as such, incorporates the same flaws. Compare Pet. 52–56 with Ex. 1003 ¶¶ 135–142. The reason Petitioner’s reliance on paragraph 72 of Wang777 is unavailing is because we are not persuaded that it discloses or suggests using two different content identifiers to identify a channel. When viewing the cited portions of that paragraph in the proper context of what Wang777 teaches as a whole (as we are required to do), we are not persuaded a skilled artisan would understand that the disclosed additional and different content identifiers in the alleged play stream are being used to identify a channel.” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “none of the claim terms require explicit constructions” and “all claim terms have been given their plain and ordinary meaning, in the context of the ’622 patent specification, under the Phillips standard.” Pet. 20. Patent Owner does not dispute this contention (see generally Prelim. Resp.) and its declarant, Mr. Hoarty, states that he “applied the plain and ordinary meaning of all claim terms at issue” (Ex. 2001 ¶ 52). 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) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, both parties rely on the plain and ordinary meaning for all of the terms used in the claims challenged in the Petition and neither party suggests a particular meaning beyond what is clearly conveyed by the claim terms in the context of the ’622 patent. Therefore, we need not construe expressly any of the claim terms.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,756,622
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 10, 2025 · IPR2024-01054 · APJ Michael T Cygan · IPR · Institution

  Institution denied for claims 1–15 because Petitioner did not show Seet was prior art, defeating the reasonable-likelihood showing for every asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 . . . 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 given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any one of claims 1–15 of the ’768 patent. Accordingly, we do not institute an inter partes review of the ’768 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not met its burden to show that Seet is prior art. Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional. See Dynamic Drinkware, 800 F.3d at 1381–82. As the “‘hallmark’ of written description, . . . the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted).” slip op. at 12

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–7. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’768 patent and the prior art of record.” slip op. at 7

  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,510,768
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 10, 2025 · IPR2024-01057 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood of proving claims 1–15 unpatentable; Seet was not shown to be prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Without the benefit of its provisional filing date, Seet, filed on February 17, 2005, is not prior art to the ’848 patent, having an uncontested benefit to the May 27, 2004 filing date of its provisional. Because each of Petitioner has not shown a reasonable likelihood of prevailing on any of its unpatentability assertions. III. CONCLUSION For the reasons discussed above, we conclude Petitioner has not shown a reasonable likelihood of prevailing with respect to any of claims 1–15. We determine that the record does not support institution. Accordingly, no inter partes review is instituted.” slip op. at 16

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner

    “Petitioner fails to show that the full scope of claim 9 of Seet is described in the Seet provisional. Seet expressly defines the claim term “media,” stating that, as it is “used herein,” “media” includes audio, video, software, and pictures. Ex. 1006 ¶ 50 (“Media content may include one . . . of audio . . ., video . . ., software . . ., and pictures”). Such a statement provides a clear definition of the term “media” that includes video, software, and pictures, in addition to audio. In addition to the express definition, Seet elsewhere indicates that its media includes video and other non-audio signals and databases. See, e.g., Ex. 1006 ¶¶ 26 (“if the media stream 102 is a video broadcast, each media item may comprise a television show or segment, an advertisement, or any other type of video”), 42–46 (creating databases of “videos,” “faces,” and “files”), 49 (“any signal that contains repeating content over any broadcast medium can benefit from the procedure described herein.”). Accordingly, the use of media in claim 9 for its claimed “media content database” and “media stream[s]” also includes both audio and non-audio media. The disclosure of the Seet provisional, however, is more limited and defines the term media exclusively as audio. Ex. 1019, 4 (“Media will be defined as any streaming audio source in any form, be it radio, television, cable, satellite, internet stream, or the like.”). This definition does not include the full scope of “media” as that term is used in claim 9 of Seet because it does not include video, software, and pictures.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree with at least two years of relevant industry experience, including in digital media content delivery.” Pet. 2 (citing Ex. 1003 ¶ 32). Patent Owner argues that the level of ordinary skill should include persons lacking a formal degree but possessing considerable industry experience designing and implementing automated content recognition systems, and that such systems are the relevant industry experience. Prelim. Resp. 6–8. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, modified by the more inclusive standards of Patent Owner, as it appears to be consistent with the specification of the ’848 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Here, neither party sets forth any explicit claim construction. Pet. 14; Prelim. Resp. Although Patent Owner analyzes the term “media monitoring device” in its arguments (Preliminary Response 37–43), our ultimate determination on institution does not turn on that construction. We determine that no need exists to determine a particular construction for purposes of this institution decision, and instead construe the claims pursuant to § 42.100(b).” slip op. at 8

  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 10,719,848
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 5, 2025 · IPR2024-01056 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–11 were unpatentable over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority to determine whether to institute an inter partes review. 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with Patent Owner that a person can qualify as a POSA based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’896 Patent. We disagree, however, that industry experience with ACR systems is required to qualify as a POSA. The ’896 Patent describes a media usage monitoring and measurement method that relies on “known content recognition methods.” Ex. 1001, code (54), 5:48–52. The claimed invention using certain data, including content identification results. Id. at code (57), 15:12–35. The ’896 Patent does not claim a new method of content recognition. For these reasons, we determine that a POSA would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a POSA based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “The claims and Specification are consistent with defining “offset” as relative, rather than absolute. Claim elements 1.4 and 9.5 each recite: “a content offset indicating a time position of a content identification result within identified content.” Ex. 1001, 15:24–26, 16:25–27 (emphasis added). In our view, “a time position . . . within identified content” means the time position is relative to a reference point within the identified content. Our understanding of the claim language is reinforced by the Specification. According to the ’896 Patent, content offset data are shown in Figure 5, but not Figure 4. Ex. 1001, 9:22–26. Figures 4 and 5 both show a series of log times and corresponding content IDs, where the log time indicates when a sample began to be captured. Id. at 9:29–32, 9:40–45, 11:32–35, Figs. 4, 5. Figure 5 additionally includes a “content offset” column, as illustrated below. Id. at Fig. 5 (excerpt). According to the ’896 Patent, Each content offset value represents a time offset from the beginning of a particular piece of content. For example, row 8 of Play Stream 510 corresponds to a sample whose beginning is located 9 time units from the beginning of TV program 27, thus the content offset is referenced as (0)+9. Id. at 11:41–46. Although both the log time and content offset are expressed in relative terms in the Figure 5 example, only the content offset is relative to a reference point within the identified content, in this case the beginning of the content. Id. at 9:40–45, 11:41–46.” slip op. at 12

  • Expert testimonyOther

    “We have considered Dr. Russ’s testimony pertaining to claim elements 1.1 and 9.1 and Feininger. Ex. 1003 ¶¶ 136–142, 179. Dr. Russ testifies that Feininger’s “[p]resentation time retriever 56 . . . retrieves a ‘program identifier [(content identification results)] from the packet header of the section of the recorded program currently being played back and store[s] that identifier in one or more program identification fields 68.’” Ex. 1003 ¶ 137 (citing Ex. 1005, 5:28–42). Like Petitioner, Dr. Russ does not take into account the description of “content identification” provided earlier in his testimony. Ex. 1003 ¶ 41 (citing Ex. 1001, 5:48–66). Dr. Russ does not assert that Feininger discloses content identification. Without content identification, there can be no content identification results. Dr. Russ further testifies that Feininger’s apparatus 50 “generates the ‘play stream of content identification results’ based on the data samples submitted to data logging device 26.” Ex. 1003 ¶ 139 (citing Ex. 1005, 4:4–13). Missing from this testimony is any opinion about whether Feininger’s apparatus 50 or data logging device 26 performs content identification. Dr. Russ does not point to any teaching or suggestion in Feininger that extracted program identifiers 68 result from content identification.” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,572,896
• ROKU, Inc. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Feb 5, 2025 · IPR2024-01053 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that Petitioner does not meet the reasonable likelihood standard, and we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with Patent Owner that a person can qualify as a POSA based on relevant industry experience in lieu of a formal degree. We also agree that ACR systems are relevant to the subject matter of the ’791 Patent. We disagree, however, that industry experience with ACR systems is required to qualify as a POSA. The ’791 Patent describes a media usage monitoring and measurement method that relies on “known content recognition methods.” Ex. 1001, code (54), 5:38–42. The claimed invention using certain data, including content identification results. Id. at code (57), 14:38–59 (claim 1). The ’791 Patent does not claim a new method of content recognition. For these reasons, we determine that a POSA would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or an equivalent degree, with two years of relevant industry experience in digital media content delivery or designing or implementing ACR systems. A person may qualify as a POSA based on more than two years of relevant industry experience in lieu of a bachelor’s degree.” slip op. at 9

  • Expert testimonyOther

    “We have considered Dr. Russ’s testimony pertaining to claim elements 1.1 and 9.1 and Feininger. Ex. 1003 ¶¶ 135–141, 170. Dr. Russ testifies that Feininger’s “[p]resentation time retriever 56 . . . retrieves a ‘program identifier [(content identification results)] from the packet header of the section of the recorded program currently being played back and store[s] that identifier in one or more program identification fields 68.’” Ex. 1003 ¶ 137 (citing Ex. 1005, 5:28–42). Like Petitioner, Dr. Russ does not take into account the description of “content identification” provided earlier in his testimony. Ex. 1003 ¶ 41 (citing Ex. 1001, 5:38–55). Dr. Russ does not assert that Feininger discloses content identification. Without content identification, there can be no content identification results. Dr. Russ further testifies that Feininger’s apparatus 50 “generates the ‘play stream of content identification results’ based on the data samples submitted to data logging device 26.” Ex. 1003 ¶ 139 (citing Ex. 1005, 4:4–13). Missing from this testimony is any opinion about whether Feininger’s apparatus 50 or data logging device 26 performs content identification. Dr. Russ does not point to any teaching or suggestion in Feininger that extracted program identifiers 68 result from content identification.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “The claims and Specification are consistent with defining “offset” as relative, rather than absolute. Claim elements 1.4 and 9.5 each recite: “a content offset indicating a time position of a content identification result within identified content.” Ex. 1001, 14:51–53, 16:7–9 (emphasis added). In our view, “a time position . . . within identified content” means the time position is relative to a reference point within the identified content. Our understanding of the claim language is reinforced by the Specification. According to the ’791 Patent, content offset data are shown in Figure 5, but not Figure 4. Ex. 1001, 9:22–26. Figures 4 and 5 both show a series of log times and corresponding content IDs, where the log time indicates when a sample began to be captured. Id. at 9:16–19, 9:27–31, 11:10–22, Figs. 4, 5. Figure 5 additionally includes a “content offset” column, as illustrated below. Id. at Fig. 5 (excerpt). According to the ’791 Patent, Each content offset value represents a time offset from the beginning of a particular piece of content. For example, row 8 of Play Stream 510 corresponds to a sample whose beginning is located 9 time units from the beginning of TV program 27, thus the content offset is referenced as (0)+9. Id. at 11:22–26. Although both the log time and content offset are expressed in relative terms in the Figure 5 example, only the content offset is relative to a reference point within the identified content, in this case the beginning of the content. Id. at 9:27–31, 11:22–26.” slip op. at 12

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,296,791

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.