- Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentablePTAB · Nov 4, 2025 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the cited combinations did not teach or suggest varying the rate of the claimed image-processing steps according to user distance.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 14 (citing Forsyth Decl. ¶¶ 62– 63). For this Decision, 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.7” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We find that Petitioner has not demonstrated by a preponderance of evidence that step 1(h) is taught or suggested by the references cited by Petitioner or the testimony of Petitioner’s expert, Dr. Karam. We agree, instead, with Patent Owner’s argument that “a [person of ordinary skill] would regard the disclosures in Rosenberg relating to proximity detection to be in connection with turning on or off various display modes and not in connection with varying the rate of one or more steps that are performed to transform a series of captured images of a user.” PO Resp. 33 (citing Ex.1005, ¶¶ 25, 32, 56, 69, 114). This distinction was explored during the final hearing. Petitioner’s counsel confirmed that in Rosenberg’s mirror mode, the rate of performing the processing steps does not vary: [THE BOARD]: It’s true that when the -- when Rosenberg is acting in the mirror mode, it’s always at the same rate, correct? It’s always performing those three processing steps at the same rate? [COUNSEL]: Correct. Hearing Tr. 34:13–16. We conclude that Rosenberg fails to disclose or suggest step 1(h) for the reasons given by Patent Owner and summarized above. We agree with Patent Owner’s analysis that in Rosenberg, when the mirror is off the processing steps are not performed, and when the mirror is on, the steps are performed “at an invariant rate.” PO Sur-reply 18–19.” slip op. at 33
Patent outcomesUS 8,982,109 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,109 - PTAB · Oct 16, 2025 · IPR2025-00710 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–9, 13, and 16–20 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds.
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 . . . 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 arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrates a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[w]hile Patent Owner disagrees with the proposed level of skill, under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” Prelim. Resp. 5. Patent Owner does not, at this point, propose a different level of skill. Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with our review and understanding of the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction At this early stage of the proceeding, no claim terms are disputed and neither party offers any particular construction for any claim term. Pet. 13; Prelim. Resp. 5. Having considered both parties arguments and evidence in light of the challenged claims, at this stage, we are not apprised of any reason to explicitly construe any claim term for purposes of institution. See 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))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Considering first the motivation to combine, we find Petitioner’s reasoning sufficiently persuasive for purposes of institution. Petitioner argues that Okita’s “pseudo values” are just like Schneier’s credits and “[b]ecause the pseudo-values can be exchanged for virtual money that can be used in other tournaments, arcades, or the like, ‘a game can be provided that generates tension for the player due to the fact that the virtual money is earned or is confiscated based on the game results.’” Pet. 51 (quoting Ex. 1009 ¶ 9). Petitioner’s declarant, Mr. Crevelt, further testifies that Okita’s “[r]ewards programs are a routine feature of games because players are encouraged to play more to accumulate points or other pseudo-values to exchange for prizes or other items . . . [t]he virtual money conversion functionality would have opened up more game play options and more items to purchase.” Ex. 1003 ¶ 187. Based on the record before us, Petitioner has shown sufficiently for purposes of institution that the use of Okita’s pseudo-values and broad player’s interest and engagement with the video game.” slip op. at 16
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,825,294 - PTAB · Oct 16, 2025 · IPR2025-00709 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6, 8–10, 14–18, 21–23, 25, 27, and 29 based on reasonable likelihood of obviousness over Schneier and over Schneier with Okita.
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 . . . 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 arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrates a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[w]hile Patent Owner disagrees with the proposed level of skill, under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” Prelim. Resp. 5. Patent Owner does not, at this point, propose a different level of skill. Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with our review and understanding of the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction At this early stage of the proceeding, no claim terms are disputed and neither party offers any particular construction for any claim term. Pet. 12– 13; Prelim. Resp. 5. Having considered both parties arguments and evidence in light of the challenged claims, at this stage, we are not apprised of any reason to expressly construe any claim term for purposes of institution. See 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))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,650,635 - Activision Blizzard, Inc. v. Milestone Entertainment, LLCInstitution deniedPTAB · Oct 16, 2025 · IPR2025-00713 · APJ Linda E Horner · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Kelly, alone or with Paulsen, renders any challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition.” slip op. at 2
- BurdenNot shown unpatentable
“We agree with Patent Owner that Petitioner has failed to provide adequate evidence and analysis to show that Kelly discloses storing the identified user input in Kelly’s system. For instance, the portion of Kelly relied upon in the Petition describes how user input provides a particular game command to game processor 12, and game processor 12 interprets and uses this input to influence game states and game events. Ex. 1005, 10:12– 15. The portion of Kelly makes no mention of storing the user input. Petitioner also cites generally to other portions of Kelly with insufficient explanation of their relevance. Pet. 22; Ex. 1003 ¶ 136 (citing 1:44–46, 9:62–66, 46:32–37, 46:49–52). These cited passages describe generally that a computer, on which games are played, includes a video screen and buttons, and that user input is provided to a game unit to influence game events and/or provide particular game commands to the computer. Ex. 1005, 1:44–46, 9:62–66, 46:32–37, 46:49–52. Petitioner fails to sufficiently show how any of these passages describes storing user input, such as button presses, in Kelly’s system.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.6 Based on the testimony of Mr. Crevelt, 6 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 16 (citing Ex. 1003 ¶¶ 102–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’607 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11
Nonecites Phillips · GrahamPatents in suitUS 11,501,607 - PTAB · Oct 16, 2025 · IPR2025-00711 · APJ Linda E Horner · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9, 11–13, 15, 19, 23, 24, and 29 based on a reasonable likelihood of success on the § 103 challenges.
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 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.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we grant the Petition and institute an inter partes review of claims 1, 2, 4–7, 9, 11‒13, 15, 19, 23, 24, and 29 of the ’164 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is not necessary for us to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 13. Patent Owner similarly submits that we “need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Prelim. Resp. 9. At this stage of the proceeding, we do not need to expressly construe any claim terms to determine whether Petitioner showed a reasonable likelihood of prevailing as to its challenge of at least one challenged claim.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Kelly discloses that game processor 12 implements the functions of game unit 10 during a game process and includes several input and output functions (Ex. 1005, 9:15–18), including: The game processor controls the game apparatus by receiving inputs from a player, from other game apparatuses, from a server (described below), from a progressive bonus apparatus, and from other sources. The game processor also controls output signals to update the game process when appropriate. In addition, the game processor controls the redemption system of the present invention by calculating when prizes are awarded, calculating and updating prize lists and prize costs, and other functions, as described below. Ex. 1005, 9:18–27. As to the redemption system, Kelly discloses prize table 480 that is displayed to the operator. Ex. 1005, 34:64–65, Fig. 9a. In one embodiment, the operator can adjust prize characteristics for the game unit and any linked game units. Id. at 35:1–2. Kelly also discloses an alternative embodiment, however, in which selection of a specific prize from the table 480 can be based on random and/or statistical determination. Id. at 36:48–49. In this alternative embodiment, “random determination of whether a particular prize is to be awarded is also modified by statistical information to create a ‘best fit’ of prizes awarded according to the operator’s desired odds.” Id. at 36:63–66. awarded every 8,000 games, so if it is randomly determined that a third video console is to be awarded within, for example, the 3000th game, then a different prize, e.g., the next most valuable prize, can be awarded so that the desired odds are better met. Id. at 37:1–9. Thus, we find Petitioner has set forth sufficient evidence to show a reasonable likelihood that Kelly’s game processor can modify the variable parameters of the prizing structure to meet the mandated parameters of the desired odds, as called for in limitation [1.c.v].” slip op. at 23
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther
“To remove Walker as prior art under §§ 102(a) and 102(e), Patent Owner must show either it reduced the invention to practice prior to Walker’s effective date, or that it invented prior to Walker’s effective date. In the case of the latter, Patent Owner must demonstrate conception prior to May 1, 2003, and reasonably continuous diligence throughout the entire critical period, which begins just prior to the Walker’s effective date and ends on the date of the invention’s actual or constructive reduction to practice. Patent Owner provides evidence purporting to show that it conceived of the invention prior to May 1, 2003. Patent Owner has not asserted that this evidence demonstrates actual reduction to practice, nor do we have sufficient evidence at this stage to make that determination. Further, Patent Owner’s earliest possible constructive reduction to practice (September 1, 2004) does not pre-date Walker’s effective date. Thus, at this stage, Patent Owner would need to show it invented prior to Walker’s effective date through evidence of conception and reasonable diligence to remove Walker as prior art. At this stage of the proceeding, without Patent Owner’s evidence of diligence, Patent Owner has not provided sufficient evidence to show that Petitioner fails to show a reasonable likelihood of prevailing in establishing that Walker is prior art. This issue of whether Walker is prior art to the ’164 patent will benefit from further development of the record during the trial proceeding.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,335,164 - PTAB · Oct 16, 2025 · IPR2025-00712 · APJ James A Tartal · IPR · Institution
The Board instituted inter partes review of claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 on all asserted grounds, finding a reasonable likelihood of prevailing on claim 1 over Walker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2025). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’279 patent on all grounds asserted in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedOther
“application filed November 12, 2021, that asserts the benefit of a series of applications, the earliest of which was filed September 2, 2003. Ex. 1001, codes (22), (45), (60). Petitioner asserts that the Challenged Claims of the ’279 patent “are entitled to an effective filing date of no earlier than September 2, 2003,” consistent with the date of the earliest application identified by the ’279 patent.9 See Pet. 6. For purposes of our analysis on the current record, in this Decision we apply September 2, 2003, as the priority date of the Challenged Claims.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“independent claim 1. Pet. 32–63. Petitioner relies on the testimony of Mr. Crevelt in support of its contentions with respect to claim 1. Ex. 1003 ¶¶ 234–286. Further, according to Petitioner, “[n]o findings regarding motivation to combine or reasonable expectation of success are necessary with a single reference ground,” but Walker “teaches that the features of the embodiments are options that can be combined.” Pet. 42 n.6 (citing Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1372–73 (Fed. Cir. 2019). At this stage, Patent Owner does not contest Petitioner’s proffered assertions about the” slip op. at 20
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,393,279 - PTAB · Oct 16, 2025 · IPR2025-00708 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 are unpatentable over Walker and Schneier.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2025). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’336 patent on all grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.8 Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art 7 Petitioner states that it is not aware of secondary considerations that affect the obviousness arguments it presents. Pet. 66. Patent Owner has not offered objective evidence of nonobviousness at this stage of the proceeding. 8 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. Resp. 8. Thus, Patent Owner does not present evidence or arguments in its Preliminary Response related to the level of ordinary skill in the art. competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is not necessary for us to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 14–15. Patent Owner similarly submits that we “need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Prelim. Resp. 8. At this stage of the proceeding, we do not need to expressly construe any claim terms to determine whether Petitioner showed a reasonable likelihood of prevailing as to its challenge of at least one challenged claim.” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedOther
“an application filed September 20, 2010, that asserts the benefit of an application filed September 2, 2003. Ex. 1001, codes (22), (45), (54), (62). Petitioner asserts that the Challenged Claims of the ’336 patent “are entitled to an effective filing date of no earlier than September 2, 2003,” consistent with the date of the earliest application identified by the ’336 patent.9 See Pet. 7. For purposes of our analysis on the current record, in this Decision we apply September 2, 2003, as the priority date of the Challenged Claims. Walker was filed on May 1, 2003, and refers back to a provisional application filed on May 6, 2002, but Walker was not published until January 1, 2004. Ex. 1006, codes (22), (43), (60). Thus, Petitioner fails to show on the current record how, under pre–AIA 35 U.S.C. § 102(a), Walker discloses an invention that was described in a printed publication in this country before the invention thereof by the Patent Owner, because Walker was published after the applied priority date of the Challenged Claims of the’336 patent.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,529,336 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after 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
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · Oct 6, 2025 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Institution
Instituted review of claims 1–11, 18–20, 23–25, and 28 on all petitioned grounds, based on a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’539 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’539 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” Prelim. Resp. 22. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysisbelow. See Okajima, 261 F.3d at 1355 (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no construction should be necessary to institute this petition.” Pet. 20. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 22. Having considered the record, we determine that, at this stage, no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and “how” the references would have been combined. As the Petition explains, Krummacher discloses radiation scattering particles having a size range of 50 to 1000 nm. See Pet. 26 (citing Ex. 1107 ¶ 39). Petitioner further explains that a person of ordinary skill in the art would use Stokes teachings to further refine that size range to optimize the particle size to preferentially scatter blue light. See id. at 26–27. Petitioner further provides reasons, suggested in Stokes itself, why a person of ordinary skill would have made this modification to Krummacher. See id. at 27–28 (citing Ex. 1108, 7:17–26; Ex. 1102 ¶ 128). Petitioner provides sufficient evidence that such a particle size selection was within the level of skill in the art at the time of the invention. See Ex. 1102 ¶¶ 122–128, 140–144; Ex. 1108, 7:1– 17; Ex. 1124 ¶¶ 80–81. We note that we have reviewed the testimony of Patent Owner’s expert, Dr. Schubert, but this testimony does not, at this stage, diminish the weight we give to Petitioner’s expert. Thus, we find that Petitioner has shown sufficiently that the combination of Krummacher and Stokes accounts for this limitation and that a person of ordinary skill would have combined the references in the manner suggested with a reasonable expectation of success.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’539 patent. Accordingly, we institute an inter partes review.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,614,539 - PTAB · Sep 25, 2025 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Director review
The Board instituted inter partes review of claims 1–7, 11–14, and 16–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Petitioner filed a request for Director Review of the Decision granting Patent Owner’s request for discretionary denial and denying institution (“Decision,” Paper 10) and Patent Owner filed an authorized response. See Paper 121 (“DR Request”); Paper 13 (“Patent Owner Response”). The Director granted the DR Request and referred the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” Paper 14 (“Order Granting Director Review”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. See 35 U.S.C. § 314(a) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”) We therefore institute inter partes review as to all of the challenged claims of the ’228 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 584 U.S. 357, 364–65 (2018); 37 C.F.R. § 42.108 (a)” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, Patent Owner did not file a Preliminary Response and thus does not respond at this time. Petitioner’s description is consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our Decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a “single caching agent,” which is recited in claim 1 here. ’1344 IPR, Paper 31 (“Final Written Decision”), 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18.” slip op. at 14
Claim constructioncites KSR · NautilusPatents in suitUS 8,984,228
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.