- Apple Inc. v. Masimo CorporationSome claims unpatentablePTAB · Jun 25, 2025 · IPR2024-00290 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–3, 6, 11–17, 19, 21, 22, 27, 28, 32, 34, 36, 37, and 42–44 are unpatentable as obvious; claims 4, 18, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we deemed the differences in the parties’ proposals not material due to their substantial overlap, adopted Patent Owner’s proposal for purposes of that Decision, noted that the outcome of the Decision would not change if we adopted Petitioner’s proposal, and instructed the parties to “explain the differences and their relevance to the patentability issues in this case, and state whether any issue in the case turns on those differences” if either party continued to propose differing proposals during trial. Inst. Dec. 10–11. After institution, neither party has explained the materiality of the differences in their proposals or argued that any issues in this case turn on those differences. Based on our review of the parties’ proposals, we find Patent Owner’s proposal consistent with the level of skill exemplified by the prior art of record and the disclosure of the ’223 patent. Accordingly, we apply Patent Owner’s proposal in our analysis in this Decision. See Okajima, 261 F.3d at 1355 (“[T]he prior art itself” may reflect an appropriate level of the ordinary level of skill in the art. (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). The outcome of this Decision would not change if we applied Petitioner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for petitioner
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“preponderance of the evidence that the combination of Naghavi, Hochstedler, and Burnes discloses all of the limitations in claim 1. b. Motivation to Combine After summarizing its proposed combination, Petitioner provides a number of reasons for combining the references. Pet. 9–17. Petitioner breaks its motivation to combine arguments into three separate categories that we address below. See id. at 13–17. Patent Owner raises a number of arguments in support of its contention that “a POSITA would not have been motivated to combine the references to replace a measured value of one parameter with the measured value of another parameter,” which we address in the context of Petitioner’s arguments below. See PO Resp. 44–57. Many of Patent Owner’s arguments rely on Patent Owner’s proposed claim constructions for “replaced” and “measured value,” which we do not adopt for the reasons discussed above. For example, the first sentence in Patent Owner’s argument contends that “Naghavi, Hochstedler and Burnes do not disclose using the same screen area to display two currently measured parameters,” but we do not read the claims as requiring the display of “two currently measured parameters” consistent with Patent Owner’s construction for “measured values.” See id. at 44 (citing Ex. 2042 ¶ 125). Such arguments lack weight given that we have rejected their premise, and although Patent Owner’s arguments are suffused with references to its claim constructions, we attempt to identify where Patent Owner does not rely on those constructions in our analysis below.” slip op. at 47
Patent outcomesUS 8,190,223 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,190,223 - PTAB · Jun 23, 2025 · IPR2025-00260 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1 and 11–14 on all asserted grounds and consolidated the proceeding with IPR2024-01357.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In our Institution Decision in IPR2024-01357, we analyzed claim 1 of the ’678 patent in light of Basin-2007 and Basin-2005. ’1357 IPR, Paper 17, 23–28. We concluded, after reviewing the arguments presented there, that “Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” Id. at 28. In this proceeding, Petitioner has presented a challenge to claim 1 based on those same references that it represents is a “verbatim” copy of its previous challenge to claim 1 in the ’1357 IPR. Pet. 1–2, 28–35. Petitioner supports its challenge with expert testimony. Ex. 1002 ¶¶ 107–125.7 Patent Owner has not submitted a response on the merits of this challenge. For the purposes of this Decision, and for the reasons given in the Petition, we adopt the analysis in our Institution Decision in the ’1357 IPR (at pp. 23–28), where we determined that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Basin-2005 and Basin-2007. Turning now to Petitioner’s challenge to claim 11, Petitioner relies on Basin-2007 and Stokes for the particle size limitations added to claim 1 by that dependent claim. Pet. 35–39. Thus, Petitioner asserts that “Basin-2007 discloses a light scattering material with an average TiO2 particle size that is ‘sub-micron’ (less than 1000 nm).” Id. at 37 (citing Ex. 1005 ¶ 5). 7 Exhibit 1002 appears to be a duplicate copy of Dr. Doolittle’s declaration from the ’1357 IPR. Petitioner concludes, “Basin-2007 renders obvious claim 11 by literally disclosing the selection of average particle sizes that preferentially scatter blue light.” Id. Further, “to the extent that the claim language ‘an average particle size that is selected such that [it preferentially scatters blue light]’ requires an average particle size selected for that reason (rather than an average particle size that leads to that outcome), this claim element is rendered obvious by Stokes.” Id. at 38 (citing Doolittle Decl. ¶ 45) (alterations in original). Petitioner explains that “Stokes explicitly discloses the selection of an average particle size ‘such that the particles preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.’” Id. at 38 (citing Ex. 1008, 7:1–4) (alterations in original). Petitioner provides a motivation for combining Stokes with Basin- 2007 with a reasonable expectation of success. Pet. 38–39. Petitioner explains that “[t]o the extent that claim 11 is understood to also claim the basis for selecting a particular average particle size, a [person of ordinary skill] would have had reason to use such a basis for selecting average particle size as taught by Stokes.” Id. at 38 (citing Doolittle Decl. ¶¶ 46–48). Further, “a [person of ordinary skill] would have been motivated to apply this principle to Basin-2007, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 39 (citing Doolittle Decl. ¶ 48). At this stage, Patent Owner does not provide an opposition to Petitioner’s evidence or arguments on the merits. For the reasons given by Petitioner, including those summarized above, we determine that Petitioner” slip op. at 6
- Director reviewOther
“On June 12, 2025, the Acting Director issued a decision denying the request and referring 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 nondiscretionary considerations, as appropriate.” Paper 16, 3. The Acting Director further instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Id.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted supra, the Acting Director of the USPTO has instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Paper 16, 3. Due to the similarity of the parties, counsel, subject matter, and asserted prior art between IPR2024- 01357 and this proceeding, and in view of the Acting Director’s guidance, we exercise our discretion to consolidate this proceeding with IPR2024- 01357. See 37 C.F.R. § 42.122(a).” slip op. at 8
NonePatents in suitUS 8,604,678 - Manitowoc Foodservice Companies, LLC v. Newton CFV, LLCRehearing deniedPTAB · Jun 12, 2025 · DER2023-00006 · APJ John E Schneider · DER · Rehearing
The Board denied Manitowoc’s rehearing request, declining new evidence and finding no overlooked or misapprehended argument supporting institution of a derivation proceeding.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“As set forth in our rules, a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed.” 37 C.F.R. §42.71(d). A request for rehearing may not include new evidence absent a showing of good cause why the evidence was not presented earlier. Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, Case IPR2018-00816, slip op. at 4 (PTAB Jan. 8, 2019) (Paper 19) (precedential). Such evidence includes declarations, and timely declarations must be filed in the form of an exhibit. 37 C.F.R. § 42.63(a). As Petitioner’s Request does not comply with our rules, we deny the Request.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“Turning to the Request, it too is deficient. A Request for Rehearing must include specific identification of matters which the requesting party believes the Board overlooked or misapprehended. 37 C.F.R. § 42.71(d). A Request for Rehearing is not an opportunity to present new arguments. Moreover, Petitioner has not shown that we misapprehended or overlooked any particular matters in the Petition.” slip op. at 3
None - Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · Jun 11, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2024-00856.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. For the reasons given above, we are persuaded that Petitioner has demonstrated that permitting Petitioner to join the ’856 IPR would avoid duplication and promote the efficient resolution of both proceedings and is therefore in the interests of justice.” slip op. at 6
- BurdenInstituted
“III. DECISION ON INSTITUTION Petitioner represents that the challenges to the claims of the’109 patent in the Petition are “intentionally identical . . . in all substantive aspects” to the challenges in the ’856 IPR. See Joinder Motion 2; compare ’856 IPR, Paper 1, 2–4, with Pet. 2–3. Petitioner further represents that this proceeding and the ’856 IPR “rely upon the same analytical framework (e.g., same expert declarant and prior art) in addressing the Challenged Claims.” Joinder Motion 2. Additionally, Patent Owner does not present an opposition to the Petition on the merits and does not oppose joinder. See, e.g., Notice, 1. In view of the foregoing, for the reasons given above and in the ’856 Institution Decision, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to at least one claim of the ’109 patent. We therefore institute inter partes review of all challenges in the Petition. See 35 U.S.C. § 314(a).” slip op. at 5
NonePatents in suitUS 8,982,109 - Azurity Pharmaceuticals, Inc. v. Exelixis Inc.Institution deniedPTAB · Jun 4, 2025 · IPR2025-00210 · APJ Jeffrey N Fredman · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving claims 1–3 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that the combination of Brown, Kubo, and Remington would inherently result in less than 200 ppm impurity and Petitioner has not shown that it has a reasonable likelihood that it would prevail on the obviousness ground.” slip op. at 29
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“Here, there is no dispute that the ’349 patent and Wilson, which issued from a patent application from which priority was claimed for the ’349 patent, share the identical disclosure of a pharmaceutical composition comprising Compound IA or IB; one or more fillers; one or more disintegrants; one or more glidants; and one or more lubricants. In this embodiment, the filler comprises microcrystalline cellulose. In this embodiment, the disintegrant comprises croscarmellose sodium. In this embodiment, the disintegrant comprises croscarmellose sodium and sodium starch glycolate. In this embodiment, the glidant comprises fumed silica. In this embodiment, the lubricant comprises stearic acid. Ex. 1001, 21:1–12; Ex. 1002, 20:51–62. There is express ipsis verbis disclosure of the elements recited in claim 1 of the ’349 patent.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“1. Reason to reduce contaminant levels We agree with Patent Owner that Petitioner identifies no teaching in the prior art providing any reason to reduce levels of 6,7-dimethoxy-quinoline-4-ol specifically. And while Brown does teach a desire to form “substantially pure” compounds, Brown focuses on “at least about 90 wt.%” of the compound, then lists specifically “about 90, about 91, about 92, about 93, about 94, about 95, about 96, about 97, about 98, about 99 and about 100% wt. %.” Ex. 1003 ¶ 97. This permits a range of concentration for contaminants from about 0 to 10%.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“to modify Brown’s process with Kubo to eliminate the added step. See, e.g., Id. ¶ 73. But even with that combination, Dr. Dichtel states only that a “POSA would have expected there to be a decrease in the amount of 6,7- dimethoxy-quinoline-4-ol at the end of cabozantinib (L)-malate’s synthesis that was attributable to hydrolytic degradation of the 4- (nitrophenoxy)quinoline intermediate by avoiding its use in the synthesis.” Id. ¶ 78. That is not, however, the standard for inherency. It must be the necessary result, not a possible expected result. The Federal Circuit in Par explained that: Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,298,349 - Precision Cancer Technologies Inc. v. Oncoustics Inc.Institution deniedPTAB · Jun 3, 2025 · IPR2025-00242 · APJ David Cotta · IPR · Institution
The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 not established a reasonable likelihood of prevailing on its assertion that any of the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’330 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“area” in the challenged claims was added by amendment. Ex. 1004, 181.8 In making the amendment, Applicant stated that the language added by amendment was intended to distinguish the pending claims over Uniyal,9 which Applicant characterized as disclosing a “time series” of ultrasound data. Uniyal relies on a time series of ultrasound data. In order to distinguish Uniyal, the claims have been amended to recite a single static set of ultrasound RF data in a single frame of the tissue area. As explained in the Interview, the claims rely on a signle [sic, single] “snapshot” frame of the ultrasound RF data rather than a time series or [sic, of] RF data as disclosed in Uniyal. Applicant respectfully submits the amended claims are allowable over all of the cited reference. Id. at 186–187; see also id. at 185 (Applicant’s remarks accompanying amendment, stating: “As explained in the Interview, a static set of raw ultrasound RF signals is collected for an area. This is a snapshot of the tissue area as opposed to taking a time series of RF signals”), 191 (Examiner interview summary, stating: “Inventor noted that Uniyal uses a time series US [ultrasound] data whereas the invention uses images that are non-coherent in time (e.g., a static frame)”).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“transducer, Petitioner points to Hope-Simpson’s teaching that its neural network may be “capable of ‘analyzing patterns using a with a [sic] multi-dimensional (2-or more dimensional) data set, which may also be thought of as localized data sets.’” Id. at 22 (quoting Ex. 1005 ¶ 6; alteration by Petitioner). Petitioner then asserts that “[t]he localized data sets described by Hope-Simpson are equivalent to the claimed ‘single set of raw ultrasound [RF] data forming a single frame of a tissue area.” Pet. 22 (citing Ex. 1002 ¶ 86 (testimony of Dr. Papanicolau)). But Petitioner does not explain why Hope-Simpson’s “localized data sets” equate with a single frame of a tissue area rather than, for example, a time series of frames taken at the same location. Pet. 22. Petitioner cites the testimony of Dr. Papanicolau, but Dr. Papanicolau’s testimony lacks both technical reasoning and evidentiary support; it simply mirrors the statement in Petition. Ex. 1002 ¶ 86. For this reason, we give Dr. Papanicolau’s ipse dixit testimony little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24 ,2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 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.”). Accordingly, to the extent this is the data that Hope Simpson provides to the processor, on this record, Petitioner has not sufficiently established that it constitutes a “single static set” of raw RF ultrasound data “forming a single frame.”” slip op. at 15
Claim constructioncites KSR · GrahamPatents in suitUS 11,602,330 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
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 “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. 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’”).” slip op. at 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687 - Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · May 28, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2025-00296 with IPR2024-00810.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. DECISION The challenges to the ’110 patent’s claims in this Petition are identical to the challenges in the ’810 IPR’s petition. See, e.g., Pet. 6; ’810 IPR, Paper 1, 8. Additionally, in this proceeding, Patent Owner has not argued that the Petition’s challenges lack sufficient merit to institute trial. See, e.g., Notice 1. For the same reasons we explained in the ’810 Institution Decision, we institute inter partes review of all challenges in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. In this proceeding, we are persuaded that Petitioner has demonstrated that joinder with the ʼ810 IPR would avoid duplication and promote the efficient resolution of both proceedings.” slip op. at 5
NonePatents in suitUS 8,982,110 - Mediatek Inc. v. Daedalus Prime LLCInstitutedPTAB · May 19, 2025 · IPR2025-00100 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all petitioned grounds, finding a reasonable likelihood of prevailing and declining discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner or refute the testimony by Dr. Martin. On this record, we find for the reasons given that Petitioner has sufficiently demonstrated a motivation to combine Bugiel and Chou and to further combine those references with Tkacik, TLS-1.2, or both, with a reasonable expectation of success. Pet. 8– 13.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Bugiel with Chou and with Chou and TLS-1,2. Pet. 8. Petitioner asserts that “[i]t would have been obvious to implement Bugiel’s system using Chou’s HSM 20.” Id. Petitioner explains, “[a person of ordinary skill] would have understood both Chou and Bugiel relate to secure communication using cryptographic keys for encryption and decryption.” Id. Dr. Martin testifies that “[g]iven the express teachings in Bugiel and the ubiquity of the SSL/TLS communication protocol, a [person of ordinary skill] would have been motivated to review the relevant SSL/TLS protocol for more details regarding how to implement the TLS Handshake Protocol for generating cryptographic keys based on cryptographic key exchange.” Martin Decl. ¶ 77. He further testifies that a person of ordinary skill “would have understood that the SSL/TLS processes contemplated by Bugiel and TLS- 1.2 require hardware components.” Id. ¶ 78. He testifies that “[b]ecause Chou teaches an apparatus with hardware components that satisfy the requirements specified by Bugiel and TLS-1.2, a [person of ordinary skill] would have found it obvious to implement the techniques described in Bugiel, including TLS-1.2 as required by Bugiel, using Chou’s SOC apparatus.” Id. ¶ 80. He testifies that a person of ordinary skill “would have understood that the combination of Bugiel and Chou, and Bugiel and TLS-1.2 with Chou, would have been nothing more than combining known prior art elements according to understood methods to perform the well-known TLS handshake process using a secure hardware environment. This would have yielded predictable results in establishing secure, encrypted communication between a client mobile device and a server. A [person of ordinary skill] would have had an expectation of success in the result, as Bugiel contemplates using TLS-1.2 communication protocols and secure hardware to store protected keys and to encrypt and decrypt data, as taught by Chou.” Id. ¶ 81. Dr. Martin provides additional reasons motivating the combination of Bugiel and Chou, and Bugiel, Chou, and TLS-1.2. Id. ¶¶ 82–83.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv, Paper 11 at 5–6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent “would have had at least a bachelor’s degree in electrical engineering, computer science, computer engineer, or a similar field, and approximately two years of experience in a field related to cryptography and secure communications between network devices,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 3–4 (citing Martin Decl. ¶¶ 66–68). At this stage, Patent Owner does not respond to this contention. For the purpose of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’838 patent specification and the asserted prior art.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,887,838 - Google LLC v. Security First Innovations, LLCAll claims unpatentablePTAB · May 16, 2025 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Foster; the Board did not reach the instituted Orsini anticipation or obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the invention of the ’609 patent, “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use,” and that “[a] higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶¶ 37–38).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Initially, we note that Petitioner’s challenge is based on the parties’ proposed district court constructions for “data set.” See Pet. 65–66. But neither party proposes a construction for “data chunks” in this proceeding. Notably, the 83-column Specification of the ’609 patent itself does not use the term “data chunks.” Even so, the meaning of “data chunks” is readily apparent from the plain language: the data chunks are generated “based on a data set,” and the claim defines the steps that comprise the chunk generation, including the relationship between the chunks and the data set. See Ex. 1001, 83:15–30; In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (In all aspects of claim construction, “the name of the game is the claim.” (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims–American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990))).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues, and we agree, that “it does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed [modification].” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016) (cited in Pet. Reply 14–15). Petitioner persuasively explains: [C]ontent-owner storage would not negate benefits of content-service providers (“CSPs”) storing Foster-encrypted content. [The skilled artisan] knew CSPs (e.g., cable-TV companies) often purchased/licensed content from content owners and then securely stored it before delivering to recipients. [Ex. 1099], 84-94. CSPs typically and beneficially encrypted and stored that content for repeated use (e.g., downloads by different customers) – rather than repeatedly encrypting it on-the-fly – and for backup purposes. Petition, 77-78 (citing EX1045, EX1050, EX1059-EX1060; [Ex. 1003], ¶¶206-213); [Ex. 1111], ¶¶102-114 (citing EX1073, [0043] (VOD “pre-encrypt[s]” and “stores the content”); EX1097, 2:31-53 (“real-time encryption [for VOD] poses much greater cost and space issues”); EX1075, 1:51-67; EX1105, [0034]-[0037]; EX1080, 2-7). Pet. Reply 15; see id. at 16–17 (“EX1060, e.g., describes prior-art VOD systems where CSP intermediary ‘servers . . . store all movies.’” (citing Ex. 1060 ¶¶ 7–8 (cited in Pet. 77)) (alteration in original)). As for Patent Owner’s allegation that Petitioner’s proposed modification to Foster would “compromise” Foster’s security, Petitioner argues, and we agree, that, “[b]eyond a conclusory expert declaration, [Patent Owner] offers no evidence that hacking risks or overall storage requirements would increase by storing content at a CSP/intermediary rather than a content owner.” Pet. Reply 17. Petitioner also argues, and we agree, “even if it required ‘increased cost and complexity’ to make CSP storage more secure, that does ‘not show that [the technique] was unknown or could not have practical applications,’ and thus does not support non-obviousness.” Id. at 17–18 (quoting In re Cree, 818 F.3d 694, 700–701 (Fed. Cir. 2016)); id. at 18 (“[I]t is a commonplace fact that design decisions entail making tradeoffs among multiple objectives.” (quoting Corephotonics, Ltd. v. Apple Inc., 2021 WL 4944471, at *6 (Fed. Cir. Oct. 25, 2021)); see Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine [or to modify].”). Although Patent Owner disputes whether a rational reason exists to modify Foster to arrive at the subject limitation (discussed above), Patent Owner otherwise does not dispute reasonable expectation of success in doing so. See generally PO Resp. 32–56.” slip op. at 25
Patent outcomesUS 11,068,609 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,068,609
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.