- PTAB · Mar 4, 2025 · IPR2024-01252 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 on the asserted obviousness ground over Wu and Doherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Contrary to Patent Owner’s arguments, Wu and Doherty are not cumulative to Knepper. As Petitioner argues, the Petition relies on Wu’s teachings regarding a digital recording/play back system allowing users to fast forward through or skip over advertisements during playback and Doherty’s teachings regarding rescheduling advertisements and other items of information (e.g., media content) in response to user input—neither set of teachings is present in Knepper. Reply 2.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construction for “intersplicer” as “software that selects advertising content and controls insertion and conveyance of advertising content in media content.” Pet. 5 (citing Ex. 1001, code (57), 7:45–55, 15:4–18). The specification implies that the intersplicer is “application software” that may include an “‘intersplicer’ module.” Ex. 1001, 7:45–58. The module “select[s] . . . the ads to be shown” and controls the insertion and conveyance of ads and the application software “automatically edits the selected advertisements into the presentation stream.” See Pet. 5 (quoting Ex. 1001, 7:45–55; citing Ex. 1003 ¶ 23); see also Ex. 1001, code (57) (“The intersplicer combines the media files with the ad files by providing control signals to the media player, causing the media player to present the ad files with the selected media files.”). Patent Owner does not propose a construction for “intersplicer” at this stage in this proceeding. See generally Prelim. Resp.7 The preliminary record supports Petitioner’s proposed construction of an “intersplicer” for purposes of this Institution Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Feb 13, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–26 on all petition challenges and granted Altice USA’s motion to join IPR2024-00322, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Comcast IPR met the “reasonable likelihood” standard of § 314(a). IPR2024-00322, Paper 13, 36.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2024- 00322. Nonetheless, we lay out the following restrictions in order to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing. Specifically, we limit Petitioner Altice USA, Inc.’s participation in the joined proceeding, such that (1) Comcast Communications, LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding, and (2) Altice USA, Inc. is bound by all filings by Comcast Communications, LLC in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Altice USA, Inc. receives permission to file an independent paper. Altice USA, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding, so long as Comcast Communications, LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2024-00322 and protects the interests of Comcast Communications, LLC as original petitioner in IPR2024-00322, and of Patent Owner. For the foregoing reasons, and with the limitations discussed above, Petitioner’s Motion for Joinder is granted.” slip op. at 6
NonePatents in suitUS 8,356,251 - PTAB · Feb 4, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–26 on all petition grounds and granted Charter’s motion to join IPR2024-00322, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Comcast IPR met the “reasonable likelihood” standard of § 314(a). IPR2024-00322, Paper 13, 36.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“not be impacted if it were to join that proceeding because “[t]he grounds in the instant Petition—and evidence upon which they rely—are identical to the grounds in the Comcast IPR, which the Board instituted.” Mot. 1, 5. Furthermore, Petitioner agrees that, if joined as a party to the Comcast IPR, it will act as “understudy” and will not assume an active role unless Comcast terminates its involvement after joinder. Mot. 1, 7–8. Under the present circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in IPR2024- 00322. Nonetheless, we lay out the following restrictions in order to ensure minimal impact on the trial schedule, cost, discovery, and potential briefing. Specifically, we limit Petitioner Charter Communications, Inc.’s participation in the joined proceeding, such that (1) Comcast Communications, LLC alone is responsible for all petitioner filings in the joined proceeding until such time that it is no longer an entity in the joined proceeding, and (2) Charter Communications, Inc. is bound by all filings by Comcast Communications, LLC in the joined proceeding, except for (a) filings regarding termination or settlement and (b) filings where Charter Communications, Inc. receives permission to file an independent paper. Charter Communications, Inc. must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding, so long as Comcast Communications, LLC remains as a non-terminated petitioner in the joined proceeding. This arrangement promotes the just and efficient administration of the ongoing trial in IPR2024-00322 and protects the interests of Comcast Communications, LLC as original petitioner in IPR2024-00322, and of Patent Owner.” slip op. at 6
NonePatents in suitUS 8,356,251 - PTAB · Dec 3, 2024 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2003). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’109 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has stipulated as follows: Petitioners stipulate that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,982,109 on the grounds presented in the petition in IPR2024-00856, Petitioners will not pursue an invalidity defense in district court that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Paper 13 (Updated Mandatory Notices), 1 (citing Ex. 1044). We determine that this stipulation is consistent in scope with the stipulation in Sotera Wireless cited approvingly in the Guidance Memo. Consistent with the Guidance Memo, therefore, we decline to exercise our discretion to deny institution under Fintiv in view of the parallel district court proceeding.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, a person of ordinary skill in the art “as of December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶¶ 65–67). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 13. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms and phrases necessary to our decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy. To the extent further clarification or explanation of any claim term is necessary for this Decision, we will do so in the context of our analysis of that term infra.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,109 - PTAB · Nov 26, 2024 · IPR2024-00810 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 was obvious over Rosenberg and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).9 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on all of the parties’ arguments and evidence, Petitioner demonstrates a reasonable likelihood of establishing that claim 1 of the ’110 patent would have been obvious over Rosenberg and Park. Pet. 18–19, 52–73, Prelim. Resp. 6–8, 14–18. In the following sections, we discuss in detail the parties’ current disputes regarding Petitioner’s position that claim 1 would have been obvious over Rosenberg and Park.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 8 (citing Ex. 1003 ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard” and that “[t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 10. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms and phrases necessary to our decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,110 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00816 · APJ Russell E Cass · IPR · Institution
Instituted IPR on claims 1–7, 9–13, 16, 23, 25, 26, 28, and 29 over Behbahani, Leete, and Tan because claim 23 showed a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). 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). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’330 patent. Pet. 73. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 54. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’330 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“That Behbahani and Tan appeared in an initialed IDS is sufficient to satisfy the first Advanced Bionics prong. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). Leete was not previously presented to the Office, but we need not decide whether the reference to Leete in Behbahani (see Section II.F.1 below) or Petitioner’s obviousness arguments concerning Behbahani and Leete suffice to satisfy the first Advanced Bionics prong for purposes of this Decision. As discussed below, even if we assume that the first part of the Advanced Bionics framework is satisfied, Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims in the second part of the framework.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,010,330 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00819 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one claim unpatentable over Behbahani, Leete, and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’164 patent. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’164 patent or any related patents dbased on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework when determining whether to exercise its discretion under 35 U.S.C. § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 18
- Skill levelSkill level patent owner adoptedOther
“of the alleged invention would have had “a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communication devices.” Pet. 10 (citing Ex. 1003 ¶¶ 27–29). Petitioner further states that “[a]dditional education or experience might substitute for the above requirements.” Id. Relying on Dr. Larson, Patent Owner argues that a person of ordinary skill “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such systems and familiarity with wireless standards.” Prelim. Resp. 27– 28 (citing Ex. 2005 ¶ 50). Patent Owner further states that “[a]dditional education could substitute for experience and vice versa.” Id.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00818 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23, finding a reasonable likelihood that claim 7 is unpatentable over Behbahani, Leete, and Tan under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, Petitioner has made a sufficient showing as to this limitation for purposes of institution.11 Petitioner has sufficiently shown, and Patent Owner does not appear to dispute, that Behbahani switches from its high-power filter to its low-power filter in response to signal strength measurements, and that this “filter swap” varies the impedance and/or bias current in the receiver. The only disputed issues appear to be: (1) whether the claim language excludes Behbahani’s filter” slip op. at 40
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’202 patent. Pet. 75. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’202 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–72. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term for this case. See Pet. 8–10; Prelim. Resp. 28–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.c, infra. The parties may further address the meaning of the term “signal path” during the trial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,524,202 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00817 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Behbahani, Leete, and Tan.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends a person of ordinary skill in the art “would have had a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 39–41). Patent Owner contends that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 28 (Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term in this proceeding. See Pet. 8–10; PO Resp. 29–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.f, infra. The parties may further address the meaning of the term “signal path” during the trial. Patent Owner also argues that we should dismiss the Petition because Petitioner is relying on a construction that it disagreed with in the related district court litigation, citing the Board’s non-precedential decisions in Samsung Elecs. Am., Inc. v. Cobblestone Wireless LLC, IPR2024-00319, Paper 16 at 13–23 (PTAB Jun. 24, 2024) and Hologic, Inc. v. Enzo Life Sciences, Inc., IPR2018-00019, Paper 21 at 5–7 (PTAB Nov. 28, 2018). Prelim. Resp. 30–32. Patent Owner, however, relies on a flawed understanding of the Samsung case. In Samsung, the Board determined that Petitioner had failed to establish a reasonable likelihood of success because it offered and relied on a claim construction that it failed to support, disagreed with, and disparaged, and that this claim construction was not agreed upon by the patent owner or adopted by a district court. Samsung, Paper 21 at 13–23. Specifically, as the Board pointed out in Samsung, the petitioner argued and submitted testimony from its expert that its proffered construction was “expressly excluded” by the specification of the challenged patent and was “contrary to [the term’s] plain and ordinary meaning.” Id. at 14–15, 19–20. In reaching its decision in Samsung, the Board expressly “distinguish[ed] this case from situations where a petitioner relies on the ordinary meaning of a claim term, offers alternative constructions of a claim term, or relies on a construction agreed upon by the parties in the proceeding at issue.” Id. at 21. Here, unlike in Samsung, Petitioner relies on the plain and ordinary meaning of the dynamic limitation, which is agreed to by the parties in this proceeding and has been adopted by district courts in parallel litigation. We similarly find the facts in Hologic distinguishable from those presented here. See Hologic at 4 (stating, for example, that “[n]early every time [p]etitioner discusses its use in the [p]etition of [p]atent [o]wner’s proposed construction, [p]etitioner affirmatively disagrees with the construction it adopts.”). Therefore, we reject Patent Owner’s argument that Samsung and Hologic support dismissal of the Petition here. Other than the terms discussed above, we determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Director Vidal has instructed the Board that General Plastic factor 1 should not be expanded beyond Valve to apply to parties that do not have a significant relationship. See Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12 at 6 (Director Vidal, April 19, 2024) (“The majority’s Decision in this proceeding improperly expanded the discretionary principles set forth in General Plastic and Valve to apply to petitioners that are not the same and do not have a ‘significant relationship.’”). Moreover, Director Vidal has instructed that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Id. We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’825 patent. Pet. 70. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’825 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the proposed grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–68. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,129,825 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00820 · APJ Aaron W Moore · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–6, and 8–11 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over Behbahani and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“To the extent Patent Owner is suggesting that considerations such as those set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential Section II.B.4.i) support denial of institution, we are unpersuaded because the other proceedings to which Patent Owner refers did not involve the ’210 patent. We thus do not exercise our discretion to deny institution under 35” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, we find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references. See Pet. 17–67. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani or Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied step 2 of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary for Claim 1 For the foregoing reasons, we are persuaded that Petitioner’s cited evidence and reasoning shows a reasonable likelihood that Petitioner would prevail in its contentions regarding claim 1.5 5. Remaining Claims At this stage, Patent Owner does not separately challenge Petitioner’s contentions as to claims 2–3, 5–6, and 8–11. Because we have preliminarily determined that Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’210 patent, we institute inter partes review on all claims and grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all” slip op. at 34
- Skill levelSkill level patent owner adoptedDecided for patent owner
“a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 38–40). Patent Owner contends that “a person of ordinary skill in the art . . . would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 27 (citing Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this decision. If the parties believe that the choice of one formulation over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,638,210
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.