- Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 8,886,753 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,753 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 21, 2026 · IPR2024-01104 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–18 are unpatentable under § 103: claims 1–7, 9–13, and 15–18 over Lesniak, Phinney, and Bianchi ’518; claim 8 adds Lamb; claim 14 adds Bianchi ’254; and claims 1–18 are also unpatentable over the …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick being free of an aluminum salt” and “said stick” having a particular hardness range. PO Resp. 8–9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 30 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any other claim term is necessary to resolve the dispute between the parties. 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))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002, ¶¶ 26–28). Patent Owner does not dispute Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We have considered Patent Owner’s arguments but find, on this record, Petitioner to have the better position. In particular, we are persuaded that a POSA would have been motivated to add magnesium hydroxide to Lesniak’s compositions because Phinney teaches that: (i) zinc oxide has “low activity” as a “deodorant agent”; (ii) magnesium hydroxide is “an effective synergistic effects, hence motivating a POSA to add magnesium hydroxide to Lesniak’s zinc oxide deodorants. Ex. 1004, 1:13- 3:16, 5:61-67. Reply 10; see also PO Resp. 25–26 (arguing that a POSA would have found it obvious to add magnesium hydroxide to the composition of Lesniak because zinc oxide is not a particularly efficacious antimicrobial in deodorants when used alone, whereas magnesium hydroxide is an effective deodorant). We acknowledge that Phinney suggests mixing zinc oxide with water in order to convert zinc oxide to zinc hydroxide. See, e.g., Ex. 1004, 1:17– 19 (“It was also found that a mixture of the hydroxides of zinc and magnesium could provide long lasting protection against odour due to perspiration.”). The evidence of record, however, shows that both magnesium hydroxide and zinc oxide were known options for deodorant antimicrobials, and claim 1 does not require a minimal level of effectiveness such that the combination of magnesium hydroxide and zinc oxide would need to outperform any other combination including the mixture of zinc and magnesium hydroxides. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“Our case law does not require that a particular combination must be the preferred, or the most desirable, combination[.]”). Here, we also credit the testimony of Dr. Michniak-Kohn that “POSA would understand that the water-based vs. anhydrous distinction is not relevant, as a POSA would understand that magnesium hydroxide would still function as an antimicrobial in anhydrous compositions such as those disclosed by Lesniak.” Ex. 1086 ¶ 9 (citing Ex. 1072, 1-2, 5 (disclosing deodorants without added water and with zinc oxide and/or magnesium hydroxide)). Accordingly, we are persuaded by Petitioner that “a POSA would have been” slip op. at 22
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“teaches baking soda as an effective ingredient in a deodorant. Ex. 1005, 131–33. Baking soda is also known to cause irritation that may motivate some to remove it from deodorants. See Ex. 2011 ¶ 109–110. Thus, the specific set of advantages and disadvantages for using baking soda in a deodorant was known to a person of skill in the art. On this record, the inclusion or exclusion of baking soda presents no unexpected result and the evidence of record establishes that it would have been an obvious matter of design choice within the skill of the art to balance the advantages and disadvantages associated therewith. See Medichem, S. A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”) In view of the above, we determine that the preponderance of the evidence supports Petitioner’s argument that claim 8 would have been obvious over the combination of Lesniak, Phinney, Bianchi ’518, and Lamb. Accordingly, we determine that claim 8 is obvious by the combination of Lesniak, Phinney, Bianchi ’518, and Lamb.” slip op. at 32
Patent outcomesUS 11,540,999 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,540,999 - Google LLC v. 138 East LCD Advancements LimitedAll claims unpatentablePTAB · Dec 19, 2025 · IPR2024-00959 · APJ George R Hoskins · IPR · Final written decision
Claims 1–10 are unpatentable: claims 1–8 as obvious and claim 9 as anticipated and obvious over the stated prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the level of [ordinary] skill . . . set forth in the Petition.” PO Resp. 14; Ex. 2001 ¶¶ 20–21. We adopt Petitioner’s unopposed assessment of ordinary skill, as it appears to be consistent with the ’082 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We discuss the scope of the term “specification data” in claim 1 below in Section III.D.3(b)(v) when comparing the claim with Fisher. We construe the term “image processing control data” in claim 1 below in Section III.E.2(e)(i) when comparing the claim with Ohga. Otherwise, based on the arguments and evidence presented, we determine no explicit construction is needed to resolve the parties’ controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Dr. Papanikolopoulos’s testimony that Kuwata teaches away from modifying its camera 22 to access an external server (such as Fisher’s Internet-enabled external data source) by stressing advantages of a self-contained camera-printer pair without external dependencies. See PO Resp. 15–16, 26–28 (citing Ex. 1005 ¶¶ 75, 77); Ex. 2001 ¶¶ 61–64. The cited disclosures in Kuwata simply do not discuss any advantages arising from a self-contained camera-printer pair without external dependencies, or any disadvantages arising from connecting camera 22 to an Internet server. See Ex. 1005 ¶¶ 75, 77. The cited disclosures instead tout the advantages arising from a camera manufacturer (rather than an end user photographer) specifying the image output control information CI for a specific camera-printer pairing, to reduce differences between an image as confirmed by the end user on the camera’s display and the image outputted by the printer. See id. That advantage, however, has nothing to do with whether camera 22 may or may not communicate with an Internet server. Indeed, rather than being self-contained as Patent Owner and Dr. Papanikolopoulos would have it, we find Kuwata’s camera 22 includes an I/O port for wired or wireless communication to transmit the camera’s image files GF / 10 to various printers 24 and various personal computers (PCs). See Ex. 1005, Fig. 4, ¶¶ 81, 85; Ex. 1003 ¶ 84; Pet. 14. Thus, Kuwata allows for and does not discourage communication between camera 22 and an Internet server such as Fisher’s external data source. In particular, Kuwata does not detract from the benefits of updating image output control information CI after the camera is manufactured, for example so that the camera can be paired with printers that were not yet on the market when the camera was manufactured. Moreover, Fisher recognizes that “a manufacturer may create various ancillary data files 418, and make the ancillary data files 418 available on a distributed computer network like the Internet for subsequent downloading and utilization by camera device 110.” Ex. 1006 ¶¶ 42, 55. That teaching in Fisher dovetails with Kuwata’s disclosure concerning camera manufacturers optimizing their cameras with various different printers, supporting Petitioner’s combination. See Ex. 1003 ¶¶ 84–89, 102–108.” slip op. at 27
Patent outcomesUS 7,428,082 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,428,082 - PTAB · Dec 12, 2025 · IPR2025-00763 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Zeira alone or Zeira with Yi renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’838 patent based on all grounds set forth in the Petition for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 10 (citing Ex. 1003 ¶ 21). Patent Owner does not contest this at this stage. See Prelim. Resp. Petitioner’s proposed level of ordinary skill appears to be consistent with the problems addressed in the ’838 patent. See Ex. 1001, 1:30–2:48. Therefore, we adopt it for this decision.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,212,838 - PTAB · Dec 12, 2025 · IPR2025-01116 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Sudre, Lee, and Penven.
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 [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). In other words, a decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, if the Board institutes trial, it will “institute . . . on all grounds in the petition.” PTAB Consolidated Trial Practice Guide, 5–6 (Nov. 2019)1 (“CTPG”); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least (1) a Bachelor’s Degree (or higher) in material science, materials engineering, mechanical engineering, textile engineering, or a related field, and (2) a minimum of two years of working experience in textiles engineering, fibers and textiles manufacturing, or a related field.” Pet. 4 (citing Ex. 1003 ¶¶ 21–22). Petitioner also argues that “[a]dditional education could substitute for professional experience, and vice versa.” Id. On the present record, Patent Owner does not contest Petitioner’s proposed level of ordinary skill. Prelim. Resp. 25–26. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’566 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties argue that no claim terms require express construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 26. On the present record, we agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent the parties’ arguments regarding unpatentability do address claim construction issues, we address these issues below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“articulated a reason why a person of ordinary skill in the art would have combined the teachings of Sudre, Lee, and Penven. Prelim. Resp. 60–63. In particular, Patent Owner argues that a person of ordinary skill in the art “would not have been motivated to look into Penven to modify the teachings of Lee because Lee and Penven disclose substantially different structures.” Id. at 60–61. This argument does not address Petitioner’s proposed reason to combine, which looks to Lee and Penven each to modify Sudre, not to Penven to modify Lee. See Pet. 79–81. In addition, “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). In other words, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). Petitioner provides “some articulated reasoning with some rational underpinning” to combine the teachings of Sudre with those of Lee and Penven. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, Petitioner directs us to Sudre’s teaching of “a method for manufacturing PMC,” to Sudre’s lack of teaching of “specific parameters, such as warp thread size and spacing” to satisfy the “particular requirements” of its fabric. Pet. 79 (citing Ex. 1003 ¶¶ 248–250; Ex. 1004, 1:2–5, 6:14–17). As Petitioner points out, id. at 79–80, Lee and Penven provided yarn diameters and loop diameters that were conventional, and there is evidence of record that a person of ordinary skill in the art would have used these conventional diameters in constructing Sudre’s paper machine clothing. Ex. 1003 ¶¶ 258–261, 263–266; Ex. 1006, 3:64–66.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,261,566 - Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedSome claims unpatentablePTAB · Dec 1, 2025 · IPR2024-00973 · APJ George R Hoskins · IPR · Final written decision
Claims 1, 3–7, 9–13, and 15–18 are unpatentable as obvious over Reiner and over Reiner with Takahara; claims 2, 8, and 14 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“patentability based solely on arguments considered above in the context of claim 4. See, e.g., PO Resp. 42–43, 47–52. Therefore, Patent Owner has waived any other argument. See Inst. Dec. 44; Paper 10, 10. We adopt Petitioner’s arguments concerning these claims having been obvious over Reiner as our own in this Decision. See Pet. 40–44, 50–56, 57–70, 71; Ex. 1003 ¶¶ 134–142, 154–168, 174–221, 227. Accordingly, we conclude a preponderance of the evidence establishes these claims are unpatentable as having been obvious over Reiner.” slip op. at 83
- Expert testimonyOther
- Skill levelOther
Patent outcomesUS 9,184,157 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,184,157 - DISH Network LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Nov 14, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Remand
Claims 1, 4–8, and 10–16 are unpatentable under § 103; claims 2, 3, 9, and 17 were not shown unpatentable on any asserted ground.
RulingsRemand decision- RemandOther
“The Director then issued an Order, Paper 47 (“Director’s Order” or “Dir. Ord.”) granting Director Review, vacating-in-part the Final Written Decision, and remanding the case to this Board panel for proceedings consistent with the Order. The Director vacated-in-part the Final Written Decision because it did not sufficiently address Patent Owner’s arguments with respect to claim 17 (and similar claims 2 and 9). We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand from Director Review is entered pursuant to 35 U.S.C. § 318(a). Having reviewed the complete trial record, we determine that Petitioner has shown, by a preponderance of the evidence, that the challenged claims are unpatentable except for claims 2, 3, 9, and 17.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“2. Analogous Art – DSL-Book A reference is analogous art to the claimed invention if: (1) the” slip op. at 75
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“4. Motivation to Combine Amit and Jacobsen Petitioner contends that a POSITA would have modified “Amit’s” slip op. at 31
Patent outcomesUS 7,594,249 mixed§ 103 obviousnesscites KSRPatents in suitUS 7,594,249 - PTAB · Nov 10, 2025 · IPR2025-00878 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–3 and 11 after finding a reasonable likelihood that claim 1 is anticipated by Cleveland or obvious over Nakagawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“contentions, the cited portions of Cleveland, and the testimony of Clearwater’s expert), we find, preliminarily, that Cleveland discloses each claim element in the manner recited by claim 1. Thus, on the current record, Clearwater demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as anticipated by Cleveland.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“5 Clearwater argues that Cleveland qualifies as prior art under 35 U.S.C. § 102(e)(1) “based on both its provisional and non-provisional filing dates.” Pet. 17. In support, Clearwater asserts that Cleveland’s provisional (Ex. 1006) is “virtually identical” to Cleveland itself (id. at 18) and submits claim charts to demonstrate that the Cleveland provisional provides written support for: (1) at least claim 1 of Cleveland (id. at 18–21); and (2) the subject matter relied upon in Cleveland (id. at 21–40 (citing Ex. 1006 throughout)). Based on our review of the Cleveland provisional, as well as Clearwater’s claim charts, we are persuaded that the current record demonstrates that Cleveland is prior art to the challenged patent. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“satisfies each claim element as identified above in Section I.D, i.e., elements [1.pre]–[1.6]. See id. at 22–40. Clearwater also submits annotated Figure 3 of Cleveland, reproduced below, to further illustrate the specific laminate structure of Cleveland’s coffee cup. See id. at 39.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“protective layers have “a coat weight of from 5 to 30 lbs/3000 ft2,” Clearwater submits the declaration of its expert, who explains that, because Nakagawa identifies the specific polymers and the thickness of the coat used for the plastic layers and one skilled in the art “would recognize that the disclosed polymers have a given density,” then “[w]ith these known parameters, the coat weight is easily calculated to be 23.04 lbs./ 3000 ft2 — falling squarely within the claimed range.” Pet. 53–54 (citing Ex. 1003 ¶¶ 132–133; Ex. 1008 ¶ 24; Ex. 1024, at 4). At this stage, we find that testimony credible and supported by the evidence presently of record. After reviewing the preliminary record (including Clearwater’s contentions, the cited portions of Nakagawa, and the testimony of Clearwater’s expert), we find, preliminarily, that Nakagawa discloses or otherwise suggests each claim element in the manner recited by claim 1. Thus, on the current record, Clearwater demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as obvious over Nakagawa. We need not decide Clearwater’s challenge of the dependent claims based on Nakagawa alone nor its challenge of claims 1–3 based on Nakagawa and Tanner. Our analysis of these challenges, in our view, is best left for trial after full development of the record.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,637,126 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.All claims unpatentablePTAB · Nov 5, 2025 · IPR2024-00133 · APJ Scott B Howard · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Sturman and Ho; the Board found the Ho/Jiau/Choi grounds, with and without Ellis, insufficient.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal as it better reflects the ’089 patent. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Consistent with Phillips, we begin with the “ordinary and customary meaning” of the words of the claims. Phillips, 415. F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties agree that the ordinary and customary meaning of the phrase “background object” is consistent with the dictionary definition and means an object that is “not in the foreground.” Tr. 8:10–16; PO Resp. 8–9; Ex. 2008 (AMERICAN HERITAGE DICTIONARY 2006); see also Ex. 2009 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM- WEBSTER DICTIONARY 2007); Ex. 2010 (“the part of a picture or pattern that is behind the main people or things in it” (MACMILLIAN ENGLISH DICTIONARY 2007); Ex. 2011 (“the ground or parts, as of a scene, situated in the rear (opposed to foreground)”) (RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 2005). Having determined the ordinary and customary meaning, we need only look to see if there is some reason—such as the applicant acting as a lexicographer or the ordinary and customary meaning being improperly subjective—why the ordinary and customary meaning is not controlling.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We do not find that the prosecution history demonstrates that the applicant acted as a lexicographer by “clearly set forth a definition of the disputed claim term,” or “clearly express[ing] an intent to define the term” as required by Thorner, 669 F.3d at 1365. Instead, the language in the prosecution history is consistent with the ordinary and customary meaning. That is, the applicant focuses on the location of the object relative to the area of game play, i.e., the foreground. For example, the applicant distinguishes Chu’s object as not being “background objects” because they “are featured in the forefront of [the] game play as primary objects to be manipulated or used during game play (see Chu at ¶¶ [0063]–[0065]).” Ex. 1002, 85 (emphasis added).12 The applicant continued by arguing that Chu’s objects “exist in the background, outside of the primary focus of game play and as unexpectedly interactive components, and are not themselves needed or required in order to play the game.” Id. If anything, this demonstrates an intent of the applicant to use the customary and ordinary meaning—not in the foreground—and not act as a lexicographer.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner’s argument. Under our rules, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). We have reviewed Dr. Zagal’s testimony on this subject (see Ex. 1003 ¶¶ 156–160, 163, 166, 172, 177–178) and find that it complies with our requirements. Specifically, Dr. Zagal provides his opinion and identifies specific evidence in the record that supports it. We do not find MarkForged, a nonprecedential decision, persuasive. Although MarkForged cites 37 C.F.R. § 42.65(a) as support for the proposition that expert testimony “is entitled to little to no weight [if] it merely parrots the Petition,” the rule is silent on that point. Patent Owner has not directed us to any rule or precedential decision that says that non- 17 The decision was affirmed by the Director. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Aug. 24, 2022). conclusory testimony which cites underlying factual support, such as Dr. Zagal gives in this proceeding, is entitled to no weight.” slip op. at 49
Patent outcomesUS 8,688,089 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - PTAB · Oct 16, 2025 · PGR2025-00041 · APJ Justin T Arbes · PGR · Institution
The Board instituted PGR of claims 1–20 on all asserted grounds after finding claim 1 more likely than not obvious over Hendry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“a post-grant review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute a post-grant review as to claims 1–20 of the ’243 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, electrical engineering, or a related field, and two years’ experience in data management or client-server systems and communications,” where “a higher education or skill level might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner did not file a Preliminary Response disputing Petitioner’s position. Based on the record presented, including our review of the ’243 patent and the types of problems and solutions described in the ’243 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“any reasonable construction.” Pet. 7. Patent Owner did not file a Preliminary Response disputing Petitioner’s position. We conclude that no express interpretation of any claim term is necessary to determine whether to institute a post-grant review in this proceeding.4 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)). 4 The parties, however, are encouraged to address during trial (1) interpretation of the term “user profile” in the challenged claims, particularly in view of the Specification’s apparent definition of the term “profile” (see Ex. 1001, col. 14, ll. 51–55) and description of exemplary data from which a “user profile” may be generated (id. at col. 18, ll. 40–58), and (2) the scope of the various instances of the phrase “in response to” in the challenged claims. Also, if either party intends to argue a claim interpretation during trial, including what the plain and ordinary meaning of a term is, the party should do so in a clearly designated section of its briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 44–49, available at https://www.uspto.gov/ TrialPracticeGuideConsolidated; O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination based on a combination of references requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)); see also KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Also, “[t]hough less common, in appropriate” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 12,039,243
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.