- PTAB · Jan 8, 2025 · IPR2024-00799 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–36 on all asserted grounds, finding a reasonable likelihood of success on at least one claim based on obviousness over Nguyen, Zadesky, Oda, and Gettemy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). 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). “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 petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that more than one petition may be necessary “for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. There is a dispute about the effective filing date of the ’602 patent (see IPR2024-00798), which requires arguments to be made under multiple prior art references. Although Patent Owner cites some non-precedential cases denying multiple petitions when there was a priority dispute (Prelim. Resp. 52), we do not find the reasoning in those cases persuasive. Instead, we find the reasoning in the cases Petitioner cites to be persuasive. See Medtronic, Inc. v. Teleflex Innovs. S.A.R.L, IPR2020-00130, Paper 20 at 11–13 (PTAB June 26, 2020); NRG Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17 at 16–18 (PTAB Oct. 26, 2020). Additionally, we do not believe that considering the two petitions will unduly burden the Board. Moreover, the arguments presented in the Petition regarding the combination of Nguyen, Zadesky, Oda, and Gettemy, based on the current record, are compelling. See Section II.F.5. Accordingly, we decline to exercise our discretion to deny institution of the Petition.8” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We also do not agree that Gettemy is substantially the same as either Oda US Pub or Hoshi. According to Patent Owner, “Gettemy, at best, teach[es] a stacked configuration of engine and battery, and art teaching a stacked configuration of engine and battery was considered and specifically distinguished during prosecution of the ’602 Patent, and are thus even further cumulative of the considered art.” Prelim. Resp. 42 (citing Ex. 2001 ¶ 136). Patent Owner argues that Oda US Pub and Hoshi also teach a “stacked configuration of battery and engine such that the input buttons are not above and adjacent the battery as well as the engine.” Prelim. Resp. 42–44. However, as discussed below in Section II.F.5.f, we do not agree with Patent Owner’s argument that Gettemy teaches a stacked battery and engine. Instead, based on the current record, we determine that Gettemy teaches that “a user input section located above the engine section and a battery” and that “the user input section is located adjacent the battery and the engine section.” Id. Because that design materially differs from Oda US Pub and Hoshi, Gettemy is not substantially the same as those references.11 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics 11 Because Gettemy is not substantially the same as a reference that was previously considered by the Office, we need not consider Patent Owner’s remaining arguments regarding other references Petitioner is relying on. framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the ultimate definition of a [person having ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11 (citing Pet. 11). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - PTAB · Jan 8, 2025 · IPR2024-00798 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–36 because Petitioner showed a reasonable likelihood of proving at least one challenged claim obvious over McClure-997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). 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). “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 petitionsDecided for petitioner
“Petitioner filed a document which ranks the petitions in the instant case and IPR2024-00799. Paper 4 (Statement Regarding Multiple Petitions). Specifically, Petitioner ranks this Petition as the first petition we should consider. Id. at 1. Additionally, Petitioner argues that we should consider multiple petitions because (1) the two petitions are based on different prior art based on the ’602 patent having different effective filing dates and (2) there are a large number of claims. Id. at 1–5. Patent Owner argues that the Board routinely denies institution of multiple petitions even when there is a dispute as to the effective filing date. Prelim. Resp. 45–47. Patent Owner further argues that Petitioner has not sufficiently explained why it could not have addressed all of the claims in a single petition. Id. at 47. Because this is the first ranked petition (Paper 4, 1), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to two petitions,12 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art “would have had either (1) a bachelor of science in industrial design or mechanical engineering and three years of experience designing mobile phones or (2) a master of science in industrial design or mechanical engineering and two years of experience in designing mobile phones.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 24). Patent Owner further argues that “[a] person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. at 10 (citing Ex. 2001 ¶ 24). Alternatively, Patent Owner argues that “[a] person with less experience designing mobile phones could still qualify if the person has additional education that compensates for their lesser experience.” Id. (citing Ex. 2001 ¶ 24). Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the differences in the definition of a [person having ordinary skill in the art] impact the issues presented herein for the purposes of Institution.” Prelim. Resp. 10 (citing Pet. 16). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the “[c]laims should be construed according to the ordinary and customary meaning as understood by a” person having ordinary skill in the art. Pet. 16. Petitioner also proposes a construction of the term “housing . . . forming enclosed exterior lateral sides and a rear side.” Id. at 17. “Patent Owner agrees that the claims should be construed according to the ordinary and customary meaning as understood by a” person having 6 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. ordinary skill in the art. Prelim. Resp. 10. Patent Owner further argues that there is no need to construe the “housing” limitation at this time. Id. at 11. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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))).7” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - PTAB · Jan 7, 2025 · IPR2024-01043 · APJ Gregg I Anderson · IPR · Institution
The Board instituted review of claims 1–20 on all asserted 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
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023). 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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not believe the ultimate definition of a [person of ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11. Patent Owner proposes a similar description but “does not dispute Petitioner’s definition.” Id. (citing Ex. 2001 ¶ 25). At this stage, we agree that the level of ordinary skill is not at issue here. Petitioner’s undisputed definition is supported by the testimony of both experts and is consistent with the ’741 patent and the asserted prior art. Accordingly, for trial, we apply Petitioner’s articulation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“distinguishes temporarily activated applications from “fully activated” applications. How a person of ordinary skill in the art would have understood “without fully activating the application” is not contradicted by Patent Owner’s arguments. The plain and ordinary meaning of the claim language does not require a change in the application, only that it is not “fully activated.” Petitioner’s understanding comports with the words of the claim. For purposes of this Decision, we find the term “without fully activating the application” included in limitation 1c is construed based on its plain and ordinary meaning, i.e., the application selected in the locked mode “cannot perform its full set of operations.”3 2. Remaining Terms We do not need to construe any remaining claim term at this time, and we apply the plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art, in the context of the ’741 patent. Any other term that may require construction should be identified and construed during trial. Failure to do so may result in forfeiture of the issue for purposes of a final decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues a person of ordinary skill in the art “would have been motivated to apply Nirhamo’s user-selection teachings with Hassan because Hassan teaches the user selecting icons to determine whether or not the associated application or operation was permitted.” Pet. 28 (citing showings for limitations 1c/11c/17c; Ex. 1003 ¶ 63). Further, Petitioner argues “[i]f the user’s selection was not highlighted in some fashion, it would have been difficult for the user to navigate the device interface (e.g., computer interface), as there would not be a clear way for the user to discern whether the correct object had been selected.” Id. (citing Ex. 1003 ¶ 63). On this record, Petitioner has shown a rationale with sufficient underpinnings to combine Hassan and Nirhamo.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,918,741 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Headwater Research LLCInstitutedPTAB · Dec 17, 2024 · IPR2024-01051 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claim 4, finding a reasonable likelihood that Rao and Jones render it obvious under § 103.
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) (2023). 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner does not allege any particular level of ordinary skill in the art in its Petition, but Petitioner’s expert, Dr. McDaniel, testifies that a person of ordinary skill in the art, at the time of the invention of the ’811 patent, “would have been someone with (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 communications security,” and that “[a]dditional advanced education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 24.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to combine the teachings of Rao and Jones to arrive at the invention of dependent claim 4 (which includes the features of independent claim 1) and would have had a reasonable expectation of success in doing so. Pet. 32–38; see, e.g., id. at 35 (“[The skilled artisan] would have been motivated to combine the teachings of Rao and Jones to operate in instances where bandwidth is limited and there is contention among applications for bandwidth.”); Ex. 1003 ¶ 138 (Dr. McDaniel testifying that combining the teachings of Rao and Jones “would have required only routine programming knowledge well within the skill of [the skilled artisan].”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 32–38 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Rao and Jones to arrive at the invention of claim 4, and to do so with a reasonable expectation of success. d) 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 Rao and Jones with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 4 would have been unpatentable as obvious over the combination of Rao and Jones. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 4–21, 31–39; Prelim. Reply 1–5), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 4 would have been unpatentable as obvious over the combination of Rao and Jones.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,639,811 - PTAB · Dec 4, 2024 · IPR2024-00943 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 91–152, 158, and 159 on all asserted grounds, finding a reasonable likelihood that claim 91 is obvious over Rao and Fadell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have combined Fadell’s notifications with Rao’s system with a reasonable expectation of success. See Pet. 6–8; Ex. 1015 ¶¶ 317–328, 332. Specifically, a person having ordinary skill in the art would have “combined the functionality of Rao and Fadell (e.g., of Rao’s remote access client and Fadell’s resource utilization component) to apply a policy that applies a prioritization to network packets from a background activity and notifies a user when resource usage approaches a threshold.” Ex. 1015 ¶ 321; see also id. ¶¶ 318–320 (discussing the advantages of Rao and Fadell). In such a system, “when the resource usage threshold is met, network packets from the background activity would be queued and deprioritized . . . , and the user would be notified of the resource usage threshold and afforded options for how to proceed.” Id. ¶ 322. This combination “would have improved . . . Rao’s system by enabling a policy that limits (potentially unwanted or unnecessary) background activity and notifies the user when resource usage limits are reached” and “enable[] a user to selectively control when background activity is deprioritized and held in queues to avoid data usage overages.” Id. ¶ 323. Because such a combination “would have been nothing more than the simple combination of known elements to obtain predictable results,” a person having ordinary skill in the art “would have had a reasonable expectation of success in combining Rao with Fadell.” Ex. 1015 ¶ 327.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. For the purposes of this Decision, we need not expressly construe any claim terms.7 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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))).” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PTAB · Dec 4, 2024 · IPR2024-00942 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 2–23, 26, 41–60, 63, 64, 155–157, and 160–171 on all asserted grounds after finding a reasonable likelihood Rao anticipates claim 3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 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).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that a person having ordinary skill in the art “would have at least a bachelor’s degree in computer science, computer engineering, or a similar field, and approximately two years of industry or academic experience in a field related to computer software development and/or computer networking.” Pet. 2 (citing Ex. 1015 ¶¶ 50–52). Petitioner further argues that “[w]ork experience can substitute for education, and additional education can substitute for work experience.” Id. at 2–3 (citing Ex. 1015 ¶¶ 50–52). Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’541 patent and not yet disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. For the purposes of this Decision, we need not expressly construe any claim terms.7 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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))).” slip op. at 13
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Oct 2, 2024 · IPR2024-00422 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1, 6, 8–10, 21, 23–26, 29–34, 38–40, 42, 43, 45–53, 55, 59–61, 63–70, 76, 81, 82, 85, 87–89, 100, 102–104, 107–115, 117, 120–124, 126, 129–136, 142, 145–147, 149, and …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 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” slip op. at 2
- Parallel petitionsDecided for petitioner
“In light of the guidance provided by the Consolidated Trial Practice Guide, we are persuaded by Petitioner’s argument that we should consider this petition along with the petition in IPR2024-00421. Both petitions rely on the same primary references, Baig, Costa, and either Zwicky or Banga690. Because the ’260 has a large number of claims (152) spanning over 10 columns, this is one of those situations where more than one petition is necessary for Petitioner to address each of those claims. We do not find Patent Owner’s argument regarding the number of claims asserted in the litigation to be persuasive. See Prelim. Resp. 7 (“Importantly, Petitioner does not allege that ‘the patent owner has asserted a large number of claims in litigation . . . .’” (quoting CPTG 59)). First, we have reviewed the complaint Patent Owner asserted against Petitioner and do not see any limits on which claims are asserted. See Ex. 3001. Second, Patent Owner has not identified any claims that it is not asserting. See Prelim. Resp. Therefore, based on the current record, Patent Owner is asserting all 152 claims in litigation. Moreover, we are not aware of any legal authority that limits inter partes review to only claims challenged in litigation. Accordingly, we decline to exercise our discretion to deny institution of this petition.14” slip op. at 14
- BurdenDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. Unlike Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition only has, at most, two grounds for each claim (see Pet. 4). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of the declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art would have had “a degree in computer or electrical engineering, computer science, or a similar discipline, and two years of experience with the design and/or implementation of network-based content delivery systems and Internet advertising.” Pet. 6 (citing Ex. 1002 ¶¶ 144–49). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’260 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.12” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Oct 2, 2024 · IPR2024-00421 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 11–20, 22, 26–28, 35–38, 41, 44, 54, 56–58, 61, 62, 71–75, 77–80, 83, 84, 86, 90–99, 101, 105, 106, 116, 118, 119, 125, 127, 128, 137–141, 143, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 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” slip op. at 2
- Parallel petitionsDenied
“states that “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate” and “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Prelim. Resp. 5 (emphasis omitted, citing CTPG, 59). Patent Owner also argues that because Petitioner “has not and cannot justify” its four parallel petitions, the Board should deny institution in the instant proceeding. Prelim. Resp. 4–5; see also id. at 6 (“Petitioner fails to justify why all four Petitions, filed on the same day and challenging the same independent claims, are all necessary and appropriate.” (emphasis omitted)). Patent Owner also argues that (1) different prior art does not justify multiple petitions, (2) because Patent Owner “expressly stipulates that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner,” there are no potential priority issues, and (3) Petitioner is speculating as to the potential for disputes around claim construction. Id. at 6–7. Because this is the first ranked petition (Paper 3, 1–2), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to four petitions,14 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 13
- BurdenDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. Unlike Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition only has, at most, two grounds for each claim (see Pet. 4). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of the declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art would have had “a degree in computer or electrical engineering, computer science, or a similar discipline, and two years of experience with the design and/or implementation of network-based content delivery systems and Internet advertising.” Pet. 6 (citing Ex. 1002 ¶¶ 144–49). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’260 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.12” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Freewheel Media, Inc. v. Almondnet, Inc.InstitutedPTAB · Oct 1, 2024 · IPR2024-00416 · APJ David Cotta · IPR · Institution
The Board instituted IPR on claims 1, 3–11, 13–21, and 23–25, finding a reasonable likelihood that claim 1 is obvious over Merriman and Jaye.
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. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–25 of the ’249 patent.” slip op. at 2
- Parallel petitionsOther
“DISCRETIONARY DENIAL IN VIEW OF PARALLEL PETITIONS Petitioner filed three petitions for inter partes review of claims 1, 3– 11, 13–21, and 23–25 of the ’249 patent: this Petition, the petition filed in IPR2024-00417, and the petition filed in IPR2024-00418. See Freewheel Media, Inc. v. Almondnet, Inc., IPR2024-00417, Paper 2 (PTAB, filed Mar. 1, 2024); Freewheel Media, Inc. v. Almondnet, Inc., IPR2024-00418, Paper 2 (PTAB, filed Mar. 1, 2024). Patent Owner argues that “Petitioner has not shown that this is one of the ‘rare’ instances where multiple petitions are needed.” Prelim. Resp. 1. Petitioner requests that we consider this Petition before we consider the Petitions in IPR2024-00417, and IPR2024-00418. Paper 3, 1. Accordingly, we reserve consideration of whether multiple petitions are merited for our decisions in IPR2024-00417, and IPR2024- 00418.” slip op. at 12
- Other 314aDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. Unlike in Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition relies on four grounds, comprised of combinations of two primary references with two secondary references, for each of the challenged claims (see Pet. 5–6). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 16
- BurdenInstituted
“Having reviewed the arguments and evidence included in the Petition, including the Ranka Declaration, which are not substantively addressed by Patent Owner at this stage (see Prelim. Resp.), we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman and Jaye in the manner set forth in the Petition.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,775,249 - Freewheel Media, Inc. v. Almondnet, Inc.InstitutedPTAB · Sep 5, 2024 · IPR2024-00413 · APJ Lynne H Browne · IPR · Institution
Instituted IPR on claims 1–7 and 9 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). 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(a). before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding based on the filing by Petitioner of two additional parallel petitions or due to the alleged lack of particularity in the instant Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“and deny institution in this proceeding (IPR2024-00413) because Petitioner has not shown that this is one of the ‘rare’ instances where multiple petitions are needed.” Prelim. Resp. 9. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00414 and IPR2024-00415, we agree with Patent Owner that plural petitions are not warranted. Given our Decisions to Deny Institution in IPR2024-00414 and IPR2024-00415, Patent Owner’s argument is unavailing with regard to the instant Petition.” slip op. at 10
- Other 314aDenied
“We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation grounds failed. Id. at 14. In finding that the petition lacked sufficient particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the instant Petition could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not address the level of skill in the art in its Preliminary Response. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 13
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,979,307
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.