• Microsoft Corporation v. Eyesmatch Ltd.Instituted
  PTAB · 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

  None
  Patents in suitUS 8,982,110
• Green Revolution Cooling, Inc. v. Midas Green Technologies, LLCInstituted
  PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution

  The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,405,457
• Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution denied
  PTAB · May 21, 2025 · IPR2025-00161 · APJ Monica S Ullagaddi · IPR · Institution

  The Board denied institution of IPR challenging claims 1–18 under § 314(a), concluding that the Fintiv factors, viewed holistically, favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we exercise our discretion to deny institution.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 7 Japanese Unexamined Patent Application Publication No. 2009–188316 A, published Aug. 20, 2009 (Ex. 1011). A certified translation, to which we cite, is provided (Ex. 1012, “Yamada”). 8 E. Fred Schubert, LIGHT-EMITTING DIODES, 2nd ed., 163–190, 2006 (Ex. 1013, “Schubert”). discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “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. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 4

  Discretionary denial
  Patents in suitUS 11,721,714
• Mediatek Inc. v. Daedalus Prime LLCInstituted
  PTAB · 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 · Graham
  Patents in suitUS 9,887,838
• Google LLC v. Security First Innovations, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,068,609
• Google LLC v. Security First Innovations, LLCSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “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.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “Expert 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); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable

    “Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25

  Patent outcomesUS 11,178,116 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 11,178,116
• Google LLC v. Security First Innovations, LLCAll claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9

  Patent outcomesUS 10,452,854 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,452,854
• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 7, 2025 · IPR2024-00031 · APJ Annette R Reimers · IPR · Final written decision

  Claims 16–20, 24, 26, and 27 are unpatentable: claims 16, 19, 20, 24, and 27 are anticipated by Bhattacharya, and all challenged claims are obvious over Bhattacharya and Spain.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner for the following reasons. First, Patent Owner’s definition is consistent with our determination in IPR2023-01210, which involved the same ’358 patent, and Petitioner does not explain sufficiently why we should adopt a different definition. See generally Pet. Reply.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 42–44. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 4 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the entire trial record, we agree with Petitioner’s analysis with supporting evidence and credit Dr. Sundaresan’s testimony supporting Petitioner’s position. See Pet. 20–37. Thus, we determine that Bhattacharya discloses the recitations of claim 15. b. Remaining Claims 16, 19, 20, 24, and 27 Claims 16, 19, 20, 24, and 27 depend from claim 15. Ex. 1001, 13:19–21, 12:30–36, 12:52–55; 12:63–67. Petitioner accounts for the limitations recited in each of claims 16, 19, 20, 24, and 27. Pet. 37–42. Patent Owner does not offer any arguments specifically addressing the limitations of claims 16, 19, 20, 24, and 27. See PO Resp. passim. Petitioner shows, by a preponderance of the evidence, that each element of claims 16, 19, 20, 24, and 27 is disclosed by Bhattacharya.” slip op. at 41

  Patent outcomesUS 8,400,358 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,400,358
• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 7, 2025 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 7, 9, 32, 38, and 40 are unpatentable as obvious over Bhattacharya and Yost.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, 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 key difference between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill at the time of the invention is that Patent Owner asserts that experience in “wireless networks, cellular radio systems, mobile communication devices and radio navigation systems,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 23. The ’753 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:15–23. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1004, code (57), ¶¶ 1, 13. Yost is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1008, code (57), 2:17–19. We find that there is support in the ’753 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner that Dr. Sundaresan’s declaration is substantively deficient and therefore should not be afforded weight. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 47–28. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’753 patent and the prior art analyzed in the Declaration. Ex. 1027 ¶ 14. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 15. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6–7.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that Patent Owner’s proposed additional requirements of determining the boundaries of the area from an evaluation of calibration data should not be imported into the construction of “grid point.” See Pet. Reply 1, 5. The construction of “grid point” we adopt is supported by the disclosures of the ’753 patent. Patent Owner’s support and arguments for its proposed construction rely, in large part, on specific example methods of generating non-unform grid points (NUGs). See PO Resp. 27–32. We agree with Petitioner, however, that the intrinsic record supports that the term “grid point” encompasses both uniform and non-uniform grid points. See Pet. 8–13. The ’753 patent Specification identifies “grid points” as “NUGs or UGs” and further indicates that a “NUG” is a type of a grid point. Ex. 1001, 25:31–34, 26:32–35, 13:7–8 (“a grid point, such as a NUG”). Accordingly, the claims and Specification disclose embodiments where grid points are not limited to non-uniform grid points, and they may be uniform grid points.9 Patent Owner’s proposed construction would impermissibly read out embodiments of the ’753 patent that use uniform grid points rather than non-uniform grid points.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “The evidence supports that Petitioner has sufficiently demonstrated that Bhattacharya and Yost teach limitation [1b]. Bhattacharya discloses that empirical measurement of signal strengths are used to generate “expected signal-strength functions E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t),” with a grid overlaid onto a geographic region where the center of each square represents a location. Ex. 1004 ¶¶ 106, 115–117; see also Pet. 35. Petitioner asserts, and we agree, that Bhattacharya discloses associating the expected signal-strength function with locations in a region, and that data is stored in the “Expected Signal-Strength Database.” Pet. 35–36 (citing Ex. 1004 ¶ 85). We also agree that this association of location (point) with calibration data (signal strength) is sufficient for the teaching of a “grid point,” which is disclosed by Bhattacharya. Pet. 35–36; Ex. 1004 ¶¶ 85, 105–117, 120, 123; Ex. 1003 ¶ 77; Pet. Reply 14–15; Ex. 1027 ¶¶ 44– 45. We also agree that Bhattacharya teaches the generation of “grid points” by, at least, populating the Expected Signal-Strength Database with locations and expected signal strength data, which includes interpolating the locations between sampled locations. Ex. 1004 ¶¶ 85, 119, 120, 123; Ex. 1003 ¶¶ 77– 78; Ex. 1027 ¶ 45; see also Pet. 35–36; Pet. Reply 15–16. Petitioner further asserts, and we agree, that Yost teaches collecting empirical measurements within the grid square surrounding the geographic point and averaging these measurements. Pet. 37 (citing Sections V.2–3; Ex. 1008, 7:28–44; Ex. 1003 ¶ 79). Further, because it is supported by the teachings of Bhattacharya and Yost, we credit Dr. Sundaresan’s testimony that a person of ordinary skill in the art would have found that Yost’s small areas of predetermined size are similar to the grids and grid points in Bhattacharya. Ex. 1003 ¶ 79; Ex. 1008, 7:50–51; Ex. 1004 ¶ 106, Fig. 6. Yost discloses that by averaging the empirical signal strengths the effects of fast fading can be removed (Ex. 1008, 7:50–56), so we also credit Dr. Sundaresan’s testimony in this regard on the advantages of averaging the multiple empirical measurements in a grid square (Ex. 1003 ¶ 80). Petitioner further asserts, and we agree, that a person of ordinary skill in the art would have found it obvious that expected signal-strength functions of {E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t)} for a given grid point of Bhattacharya “may represent an average of calibration data from multiple locations within the grid square, and not simply represent the storage of the calibration data itself” in view of Yost because Petitioner’s assertion is supported by the evidence. Pet. 37–38 (citing Ex. 1008, 7:50–56; Ex. 1003 ¶ 80). Accordingly, we agree with Petitioner that the combination of Bhattacharya and Yost teaches that the average of the calibration data is “representative calibration data for an area.” See Pet. 37–38; Ex. 1003 ¶¶ 79–80; Pet. Reply 16; Ex. 1027 ¶ 46. Thus, we agree with Petitioner that the evidence of record supports that Bhattacharya and Yost teach generating sets of grid points for the calibration data, where the grid points are points associated with representative calibration data for an area.” slip op. at 40

  Patent outcomesUS 8,406,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,406,753
• Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · May 7, 2025 · IPR2024-00032 · APJ Brian D Range · IPR · Final written decision

  Claims 2–5, 9, 11, 12, 14–16, 18–22, 27, 29, 31, and 32 are unpatentable over the asserted anticipation and obviousness grounds; claims 1, 25, and 35 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The ’494 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:20–27; PO Resp. 45. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1005, code (57), ¶¶ 1, 13; PO Resp. 44–45. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1006, code (54), ¶¶ 1, 11; PO Resp. 45. We find that there is support in the ’494 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 9

  • BurdenDecided for petitioner

    “Patent Owner, however, has not identified any language in the Petition that explicitly incorporates by reference Dr. Sundaresan’s testimony. See generally PO Resp.; PO Sur-Reply. Nevertheless, to the extent that the Petition purportedly incorporates by reference Dr. Sundaresan’s testimony, we do not find such incorporation sufficiently extensive to merit disregarding the testimony. Typically, an incorporation by reference is deemed improper in instances in which large portions of a declaration are incorporated—particularly where the incorporation serves to circumvent a word-count limit. See, e.g., Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative). In this case, however, Dr. Sundaresan’s testimony describing the level of ordinary skill in the art is short. Ex. 1003 ¶ 8. The amount of testimony is not extensive and, thus, its purported incorporation into the Petition presents little or no imposition on Patent Owner or the Board.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In reply, Petitioner argues that “under any reasonable read of the Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 9 Dr. Sundaresan has a doctoral degree in electrical and computer engineering and has extensive experience in wireless communications. Ex. 1003 ¶¶ 75–78. Dr. Sundaresan also has experience with navigation and geolocation systems such as development of wireless tracking systems, as evidenced by his experience in companies such as NavigateIO Inc. Id. at ¶¶ 77–78. Patent Owner does not argue that Dr. Sundaresan fails to meet requirements for the level of qualifications of one of ordinary skill in the art under its proposed qualifications, which we adopt here. See generally PO Resp.; PO Sur-reply. Based on a review of his qualifications, we determine that Dr. Sundaresan qualifies as a person of ordinary skill at the time of the invention. ¶ 8). In his supplemental declaration, Dr. Sundaresan testifies: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision.” slip op. at 27

  Patent outcomesUS 8,786,494 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,786,494

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.