- PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 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). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining 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) (citation omitted). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8
- 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. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,094,868 - PTAB · Apr 29, 2025 · IPR2025-00180 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Comcast would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. Petitioner has complied with our guidance by filing a statement ranking the petitions. See Practice Guide, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2025-00181 and IPR2025- meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts. warranted. Given our Decisions to Deny Institution in IPR2025-00181 and IPR2025-00182 and the official guidance we have received in the Practice Guide, we have no option but to deny Patent Owner’s request that we exercise our discretion to deny institution on all three of the petitions challenging the ’275 patent. Accordingly, we do not exercise our discretion to the deny institution in the instant proceeding. E. Anticipation of Claim 1 by Zhang” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’275 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7 7 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that all of the limitations “should be given their ordinary and customary meaning to a” person having ordinary skill in the art. Pet. 19. Although Petitioner argues that none of the limitations are means-plus-function terms, Petitioner provides constructions to the extent that there are means-plus-function terms. Pet. 19–20. Patent Owner does not respond. See Prelim. Resp. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 8 If either party intends to argue a claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“Practice Guide”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Parallel Petitions” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,785,275 - PTAB · Apr 1, 2025 · IPR2024-01396 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–19 under all petition grounds, finding a reasonable likelihood of success on obviousness; the majority declined Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“independent claims’ features. The vast majority of Petitioner’s assertions are uncontested at this stage. Further, Petitioner’s evidence shows that Bennett discloses “a first network stack Application Programming Interface (API), containing at least one first call accessible to each of a plurality of device applications, the first network stack API callable by each of the plurality of device applications to open and use data packet flows via the network stack, the wireless modem, and the at least one wireless network,” which is the only limitation that Patent Owner disputes at this stage of the proceeding. See infra, Section III.2. For the sole feature missing from Bennett—i.e., application-based data usage monitoring—Petitioner presents clear and uncontested evidence, backed by multiple prior art references, that the technique and its benefits were well known, as outlined below. Petitioner also articulates, with clear support from its expert and the prior art, not just one but several reasons that would have motivated a skilled artisan to combine Vadde’s application-based data monitoring technique in Bennett. For these reasons, we determine that the merits of at least one ground raised in the Petition are particularly strong. Thus, this factor weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness analysis. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and we are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenges to the challenged claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communication network applications and software.” Pet. 2. Further, “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 8. 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 ’918 patent.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“modem, network stack, and Application Programming Interfaces. Pet. 19– 29. Petitioner further relies on Bennett for its disclosure of routing network data via a first network stack application programming interface (“API”) or a second API call to a proxy media service manager that interfaces with the network stack. See id. at 29–43. Petitioner adds Vadde for teaching managing data traffic for applications using a policy-based system that enforces restrictions based on an application’s data usage. Id. at 44–57. With support from its expert Dr. Traynor and a number of prior art references, Petitioner explains that “the benefits of data usage monitoring were well-known prior to the ’918 Patent and would have been part of a POSITA’s general knowledge.” Id. at 15 (citing Exs. 1003, 1044, 1045, 1062, 1063). Petitioner articulates a number of those benefits including, for example, to facilitate identifying and restricting data-intensive applications to reduce battery usage and to facilitate greater control over data-intensive application activities that risk degrading networks high costs for users. Id. at 15–17 (citing Exs. 1003, 1041, 1042, 1046). In addition, Petitioner explains that adding per-application data usage monitoring to Bennett’s device “would have enabled device manufacturers and service providers to incorporate additional applications and functionality into wireless devices while allowing users to retain control of aggregate device data usage.” Id. at 17 (citing Exs. 1003, 1042). Petitioner adds three references, Riggs, Hendrickson and Srikantan, for their disclosures of various dependent claim features including log generators/reports, storing data associated with played media content, and a network resource indicator that identifies the media object. Pet. 58–95.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,647,918 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Mar 31, 2025 · IPR2025-00030 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR of claims 1–20 on all six asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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. Fintiv, Paper 11, 5–6. These factors relate to “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.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 20
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“they “apply a preponderance of the evidence standard to determine patent validity, which is a lower burden of proof than the clear and convincing evidence standard required in district court.” Prelim. Resp. 1. According to Patent Owner “[t]his discrepancy undermines the presumption of validity afforded to issued patents and makes it easier to invalidate a patent in an administrative forum than in a judicial proceeding.” Patent Owner cites no authority or evidence to support this argument. Moreover, the Supreme Court has held that the decision to grant a patent “is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the [U.S. Patent and Trademark Office’s (“USPTO’s” or “PTO’s”)] authority to conduct that reconsideration.” Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 584 U.S. 325, 334–35 (2018).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also explains why a person of ordinary skill would have been motivated to combine the cited references, again citing annotated figures from the cited references, specific disclosures from the references, and supporting testimony from Dr. Larson. See, id. at 21–23. Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,498,593 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00129 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of success and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00422, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00128 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of unpatentability and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00421, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - PTAB · Mar 24, 2025 · IPR2024-01420 · APJ Frances L Ippolito · IPR · Institution
Instituted IPR of claims 1–19 on all presented grounds after finding a reasonable likelihood that at least one claim is unpatentable, and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–19 of the ’402 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’402 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner filed a Sotera stipulation. Paper 11. Petitioner’s Sotera stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution, Paper 24 at 12). Accordingly, this factor weighs against discretionary denial.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’402 patent “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent technical training. Additionally, they would have at least three years of experience in designing or programming internet-related processes, such as user profile management and/or web-based targeted advertising.” Pet. 5 (citing Ex. 1003 ¶¶ 53–55). For purposes of the Preliminary Response, “Patent Owner applies Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’).” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner: “Because the prior art asserted herein discloses the preferred embodiment within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims as part of these proceedings.” Pet. 9 (citing Ex. 1003, ¶ 57). Patent Owner responds that, at the preliminary stage of this proceeding, “no term needs explicit construction to resolve any controversy between the parties.” Prelim. Resp. 9. We do not need to construe any terms expressly to reach our decision on institution. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,562,402 - PTAB · Mar 24, 2025 · IPR2024-01316 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–10 on all three obviousness grounds, finding a reasonable likelihood that Home Depot would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In the absence of specific evidence, we will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay an individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II, LLC v. Continental Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (Decision Granting Request for Rehearing) (informative) (“Sand Revolution”). If Home Depot were to file a motion to stay in the EDTX Litigation, we decline to speculate how the district court would rule on such a motion. Accordingly, this factor is neutral. slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“RavenWhite does not dispute Home Depot’s assertion that the Examiner did not meaningfully address Hinton and Varghese, either alone or in combination, during prosecution of the ’823 patent. See Ex. 1003. Stated differently, with respect to factor (a), the Examiner did not apply the teachings of Hinton and Varghese, either alone or in combination, to teach 6 All references to the page numbers in the prosecution history of the ’823 patent refer to the page numbers inserted by Home Depot in the bottom, right-hand corner of each page in Exhibit 1003. or suggest the limitations of the originally presented claims of the ’823 patent, nor did the Examiner apply the teachings of these references to account for language that was added via amendment during prosecution (i.e., a “first client device browser storage area” and a “second client device browser storage area”). With respect to factor (b), RavenWhite does not provide an explanation as to how the teachings of Flash that were applied by the Examiner during prosecution of the ’823 patent are cumulative to the teachings of Hinton and Varghese applied by Home Depot in the Petition. Turning to factor (d), RavenWhite asserts that there is overlap between arguments that were presented during prosecution of the ’823 patent to distinguish the then-pending claims over Flash and the arguments presented in the Preliminary Response to distinguish the challenged claims over Hinton and Varghese. See Prelim. Resp. 25. This overlap, by itself, does not warrant discretionary denial because, as we explain below, Home Depot persuasively explains how the teachings of Hinton and Varghese account for the claimed “first client device browser storage area” and “second client device browser storage area.” See infra Section II.D.4.b and II.E.2.b. Accordingly, we are not persuaded by RavenWhite’s arguments that the Petition presents substantially the same art or arguments that were considered previously by the Examiner during prosecution of the ’823 patent. b. Becton, Dickinson Factors (c), (e), and (f) Advanced Bionics further informs our evaluation of factors (c), (e), and (f). Advanced Bionics indicates that satisfying the first part of the framework is a prerequisite to reaching the second part of the framework. See Advanced Bionics, Paper 6 at 8, 10. As we explain above, we determine that the Petition does not present the same or substantially the same art or arguments that were presented previously to the Office during prosecution of the ’823 patent. As a result, we need not reach whether Home Depot has demonstrated that the Office erred in a manner material to the patentability of the challenged claims of the ’823 patent. 2. Summary For the reasons given above, we conclude that the circumstances presented here do not warrant exercising our discretion to deny institution under § 325(d). Notably, the Examiner did not meaningfully address Hinton and Varghese, either alone or in combination, during prosecution of the ’823 patent. As a result, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construction standard as in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). That is, claim terms generally are construed in accordance with their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art, in view of the specification and the prosecution history pertaining to the patent at issue. See id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Wills, Home Depot argues the following: [a] person of ordinary skill in the art at the time of the alleged invention of the ’823 patent (October 31, 2006) . . . would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with computer networks and digital information transmission techniques or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 6 (citing Ex. 1002 ¶ 65). In the Preliminary Response, “[RavenWhite] applies [Home Depot’s] definition of a person of ordinary skill in the art.” Prelim. Resp. 6 (citing Pet. 6). At this stage of the proceeding, we adopt Home Depot’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’823 patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Wills.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,594,823 - PTAB · Mar 20, 2025 · IPR2024-01407 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claim 26 on the Shell and Cole §103 ground, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on a holistic analysis of the Fintiv factors taking into consideration “whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering these disclosures together with the cited paragraphs of Petitioner’s declaration, Petitioner sufficiently shows on the present record that one of ordinary skill in the art would have understood that, in Shell, when a user attempts a voice call, the user can cause a current data connection to disconnect, because (1) a voice-related connection request will be made, (2) the request for voice connection will be prioritized over data requests, and (3) the request will also be prioritized if it is coming from an active application rather than an application running in the background. Pet. 47; Ex. 1003 ¶ 140; Ex. 1005 ¶¶ 8, 13, 14, 57. On the preliminary record, the relied-upon portions of Shell adequately show a determination of whether an application is an active application for prioritization purposes and disconnecting a current data connection due to a user attempting to make a voice call. Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call would be a user interaction resulting in a request for a voice connection that would be prioritized over the data request of another application using the current data connection. See Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call also involves a user interacting with an application to make it an active background. See Ex. 1003 ¶ 140. Petitioner, thus, sufficiently shows for institution that Shell’s processor is “configured to determine that the different application is an active application based on a user interaction with the different application,” as required by claim 26. Pet. 47; Ex. 1003 ¶ 140.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“One of ordinary skill in the art, Petitioner argues, would have, thus, been motivated to look to references, such as Cole, that provided mobile devices with network access while addressing cost, power, and network selection. Pet. 13–14 (citing Ex. 1003 ¶ 68; Ex. 1006, code (57), ¶¶ 14–15, 78, 83, 88, 98). Petitioner also argues that Cole describes Internet access control techniques based on conditions, such as power state change and load on current communication links, and that applying Cole to Shell would have “promoted more efficient communications and network access connectivity.” Id. at 14 (citing Ex. 1003 ¶ 68; Ex. 1006 ¶¶ 83, 98). Using Cole’s techniques, the proposed combination, Petitioner explains, would have evaluated network and power conditions, determined whether to apply an Internet access control, evaluated further conditions, such as whether the application is running in the foreground or background, and then determined the priority of packets traveling over the selected network. Pet. 14 (citing Ex. 1003 ¶ 68; Ex. 1005 ¶ 92; Ex. 1006 ¶¶ 11, 78, 83, 88, 98). Petitioner also argues that one of ordinary skill in the art would have incorporated Cole’s communication manager 260 into Shell’s connection manager modules 210 and would have incorporated Cole’s connections.” Id. at 14–15 (citing Ex. 1003 ¶ 70; Ex. 1005 ¶ 32, Fig. 1; Ex. 1006 ¶ 31). Petitioner further argues that the proposed combination would have included the processors, non-transitory memory, and display, as taught by both references, to perform the recited operations. Id. at 15 (citing Ex. 1003 ¶¶ 71–72; Ex. 1005 ¶¶ 38–44, Fig. 1; Ex. 1006 ¶¶ 34, 40, Fig. 2). Petitioner additionally argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because it “would have required only routine programming knowledge well within [ordinary] skill,” “would have amounted to nothing more than the use of a known technique to improve similar devices . . . in a similar way,” and would have been “combining prior art elements according to known methods to yield predictable results.” Pet. 15–16 (citing Ex. 1003 ¶¶ 73, 74; Ex. 1005 ¶¶ 36, 40; Ex. 1006 ¶¶ 34, 35, Fig. 2).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s declarant opines that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in services and application implementation in communication networks.” Ex. 1003 ¶ 15. The declarant also opines that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. “For purposes of [its] Preliminary Response, Patent Owner does not challenge that definition.” Prelim. Resp. 5 (citing Pet. 13 n.2; Ex. 1003 ¶ 15); see also Ex. 2010 ¶ 27 (stating “[f]or purposes of . . . my analysis, I do not disagree with this proposed level of skill in the art”). Based on the” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,179,359 - PTAB · Mar 13, 2025 · IPR2024-01337 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–30 on all presented grounds after finding a reasonable likelihood that the Jobs, Jones, and Rao combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “(1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security.” Ex. 1003 ¶ 24. The declarant also opines that “[a]dditional advanced education could compensate for a deficiency in work experience, and vice-versa.” Id. As noted above, Patent Owner has not yet responded. Based on the record at this stage, we preliminarily adopt the level of ordinary skill provided by Petitioner’s declarant to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“several “means for” performing functions without reciting structure and, thus, those limitations should be construed under 35 U.S.C. § 112, ¶ 6. Pet. 3 (citing Ex. 1001, 165:20–38). Petitioner also contends that the ’110 patent describes a device with a processor, service processor 115 being implemented on the processor, and the implementation being accomplished (citing Ex. 1001, 26:43–37:2, Figs. 9–15). According to Petitioner, “[s]ince the service processor is implemented on the processor, the corresponding structure for each of the ‘means for’ elements is a processor configured to perform respective algorithm steps for the recited function corresponding to each element.” Id. at 5 (citing Ex. 1003 ¶ 52). Petitioner specifically asserts with citations to the record the functions and corresponding structures for each of the “means for” limitations. Pet. 5– 11. After reviewing Petitioner’s arguments and evidence, we adopt Petitioner’s proposed interpretations. In particular, regarding “means for obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy,” we preliminarily agree that the function is “obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy” and “the corresponding structure includes a [user interface (UI)] and a processor configured to perform the algorithm steps of providing the user with information and accepting user choices or preferences on, e.g., service plan selection or change, and/or other service related information, settings, and/or options.” Pet. 6–7 (citing Ex. 1001, 27:15–29, 28:41–48, 65:41–51, Fig. 42D; Ex. 1003 ¶¶ 53–55).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“In particular, regarding “means for obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy,” we preliminarily agree that the function is “obtaining, through a user interface of the wireless device, a user input specifying at least an aspect of a first service policy” and “the corresponding structure includes a [user interface (UI)] and a processor configured to perform the algorithm steps of providing the user with information and accepting user choices or preferences on, e.g., service plan selection or change, and/or other service related information, settings, and/or options.” Pet. 6–7 (citing Ex. 1001, 27:15–29, 28:41–48, 65:41–51, Fig. 42D; Ex. 1003 ¶¶ 53–55). Regarding “means for identifying that the wireless device is connected to the first wireless network,” we preliminarily agree that the function is “identifying that the wireless device is connected to the first wireless network” and “the corresponding structure includes a processor configured to perform the algorithm steps of recognizing the type of network to which the device is currently connecting, e.g., by looking up the 51:4–13; Ex. 1003 ¶¶ 56–59). Regarding “means for identifying an intended, attempted, or successful data communication over the first wireless network, the intended, attempted, or successful data communication being associated with the first service activity,” we preliminarily agree that the function is “identifying an intended, attempted, or successful data communication over the first wireless network, the intended, attempted, or successful data communication being associated with the first service activity” and “the corresponding structure includes a processor configured to perform the algorithm steps of implementing traffic inspection points between the applications and the networking stack application interface using a T-buffer at socket connections and feeding the side traffic into a traffic flow analyzer.” Pet. 8–9 (citing Ex. 1001, 29:10–32, 53:51–55, 53:58–63, Fig. 16; Ex. 1003 ¶¶ 60–64). Regarding “means for applying the first service policy,” we preliminarily agree that the function is “applying the first service policy” and “the corresponding structure includes a processor configured to perform the algorithm steps of performing a service control that reduces traffic speed for all applications and traffic types successively until the service usage projections are within service usage limits for the present service billing period.” Pet. 9–11 (citing Ex. 1001, 43:38–49:1, Fig. 16; Ex. 1003 ¶¶ 65– 68).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,588,110
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.