- Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 28, 2025 · IPR2025-00969 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1, 2, 22–24, and 26–46 over all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kenner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1, 2, 22–24, and 26–46 of the ’903 patent. Accordingly, we institute an inter partes review of the ’903 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 5 (citing Ex. 1003 ¶ 47). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 26. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’903 patent and the prior art of record.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim construction at this stage of the proceeding. Pet. 5; Prelim. Resp. 26. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“On the current record, we are persuaded by Petitioner that Kenner’s video ID is associated with a shared repeater server. As noted by Patent Owner, Kenner’s video ID includes content coordinate data that may “match with the regional IMs [repeater servers] that have subscribed to that type of file.” Prelim. Resp. 35 (citing Ex. 1005, 36:20–30). Kenner describes that content coordinate data is maintained on a database of each IM, which includes the Internet address of all other connected IMs and content coordinate data describing the type of files stored by the SRUs of each IM. Ex. 1005, 41:1–6. That content coordinate data, stored in each video ID and each IM, teaches the claimed association of alias with repeater server. Because the content coordinate data directs the PIM to the repeater server(s) having that particular data, Kenner’s user does not always access the same repeater server, and Patent Owner’s argument is unavailing.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,478,903 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 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 institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that 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 at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. 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 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,924,573 - Texas Instruments Incorprated v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00934 · APJ Michael R Zecher · IPR · Final written decision
Claims 19–21 are unpatentable as obvious over DeMaw and, separately, over Macnally.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“1. Principles of Law A claim is unpatentable under § 103(a) if the differences between the” slip op. at 16
Patent outcomesUS 7,496,342 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,496,342 - PTAB · Nov 21, 2025 · IPR2025-00930 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Murphy renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response. Therefore, Petitioner’s arguments for unpatentability are currently unopposed. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one challenged claim.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. C. Claims 1–6, 8–11, and 13–20: Obviousness in View of Murphy” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“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). The Supreme Court in KSR International Co. v. slip op. at 5
§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,472,427 - PTAB · Nov 21, 2025 · IPR2025-00919 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Murphy renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response. Therefore, Petitioner’s arguments for unpatentability are currently unopposed. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one challenged claim.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“information processing facility”) to control the operation of the vehicle. Id. at 15–17 (citing Ex. 1006, 2:20–53, 4:15–27, 5:13–60, 6:1–18, 7:49–9:44, 10:29–40, 10:45–11:27, 12:6–27, 13:66–14:17, 14:23–45, 15:9–54, 16:12–50, 17:30–63, Figs. 2, 3, 6, 7, claims 1–3, 7, 9, 12, 15, 18, code (57); Ex. 1004 ¶¶ 65–77). Petitioner also argues that it would have been obvious to modify Murphy’s vehicle interface module to monitor operation of the vehicle for violations and transmit a signal to the master control unit. Id. at 17–19 (citing Ex. 1006, 1:66–2:53, 5:29–60, 7:49–9:44, 10:29–40, 10:45– 11:27, 12:1–15, 13:28–43, 13:53–14:22, 15:9–16:11, 16:50–17:63, code (57), Figs. 2, 3, 6, 7, claims 1, 10; Ex. 1004 ¶¶ 74–77). Petitioner contends that the modification would have involved a “simple substitution of one existing component (e.g., controller) for another (e.g., vehicle interface module) to perform the same functionality. This substitution would have had predictable results: the system would determine whether the driver has violated her profile regardless of which component is used.” Id. at 18 (citing Ex. 1004 ¶¶ 74–77) (internal citations omitted). The modification would reduce the communication and computation burden on Murphy’s controller. Id. at 19. Patent Owner does not contest Petitioner’s showing. Based on our review of Petitioner’s argument and the evidence that Petitioner cites in support, we find that Petitioner has demonstrated a reasonable likelihood of proving that Murphy describes the subject matter of limitation 1D. slip op. at 10
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,259,465 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 10, 2025 · IPR2025-00806 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood of success on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 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 institute inter partes review as to all of the challenged claims of the ’517 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977). To comply with the “written description” requirement of 35 U.S.C. § 112, first paragraph, an applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted). The invention claimed does not have to be described in ipsis verbis to satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). The question of written description support should not be confused, however, with the question of what would have been obvious to the artisan. Whether one skilled in the art would find the claimed invention obvious in view of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559 F.2d 588, 593 (CCPA 1977). “A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d at 1572.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“motivated to combine Beaumont and Hasan. Pet. 13–14. Petitioner argues that “Beaumont does not describe a specific interface for manually entering [policy and rules] preferences, Hasan discloses a GUI for exactly this type of policy specification.” Id. at 14 (citing Ex. 1003 ¶ 70). Petitioner asserts that Hasan discloses that its Java-based, “platform independent” GUI takes the form of a “familiar tree structure” and allows administrators to “configure device and service configuration data and policy information.” Id. (citing Ex. 1006, code (57), 7:7–26, 8:19–29, 18:9–20). Petitioner asserts that the combination of Beaumont and Hasan would have been straightforward, and a person of skill “would have been motivated to incorporate Hasan’s GUI so that administrators could conveniently configure preferences for Beaumont’s DNS servers through an intuitive interface.” Id. (citing, inter alia, Ex. 1003 ¶¶ 70–71; Ex. 1007 ¶ 23). Patent Owner does not present any arguments on the rationale to combine. See generally Prelim. Resp. We find that at this juncture Petitioner has presented sufficient rationale to combine Beaumont and Hasan.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We agree with Patent Owner that its understanding of a policy as a rule is consistent with the disclosure in the ’517 patent that “a policy may be created by generating a decision tree representing the ATC rules.” See Ex. 1001, 9:1–3. We do not agree with Patent Owner, however, that Beaumont in combination with Hasan does not disclose the claimed policy features as claimed. As discussed above, Petitioner relies upon Beaumont in combination with Hasan with its teachings on the use of Java-based GUIs in the form of a tree structure that allows administrators to configure device and service configuration data, as well as policy information. See Ex. 1006, code (57), 7:7–26, 8:19–29. For the policy teachings, Petitioner relies upon Beaumont’s “content provider DNS server that directs requests (traffic) according to a preference table (policy).” Pet. 15–16 (citing Fig. 1, ¶¶ 6, 17, 23). Petitioner also asserts that the Beaumont-Hasan GUI would enable an administrator to set policies for a selected content delivery server to allow setting server preferences and rules. Id. at 17–18 (citing, inter alia, Ex. 1007 ¶¶ 76–77). In support, Dr. Lin testifies that: The Beaumont-Hasan GUI would enable an administrator to select a content delivery server (e.g., in Japan) and set policies for that server. Hasan, 8:30–36, 10:25–34, 10:53–67; Beaumont, [0031]. For example, given the description in Hasan, selecting a server would bring up a menu enabling an administrator to assign the preferences shown in Fig. 3 of Beaumont. Hasan, 10:25–34; Beaumont, Figs. 2, 3, [0029]–[0031]. A POSITA would thus have recognized the combined GUI to “support[] the setting of said at least one policy using a decision tree representing rules” because it is presented in a “familiar tree structure” and would allow users to set server preferences and rules. Ex. 1003 ¶ 77 (emphasis added). Beaumont provides support for Dr. Lin’s testimony. Beaumont discloses that “rules such as selecting one [a server] based on user preferences can be used . . . [f]or example, a preference number can be assigned to each content delivery server and a destination domain.” Ex. 1007 ¶ 31. Beaumont further states that “FIG. 3 shows an illustrative example of incorporating preference numbers in a column.” Id. Thus, contrary to Patent Owner’s arguments, Beaumont discloses that rules or policies, represented by the preference number, are represented in the table shown in Figure 3 of Beaumont. Dr. Lin also testifies that in the Beaumont-Hasan combination “the GUI supports the setting of” policy is taught. Ex. 1003 ¶ 77. Hasan provides support that service policies can be modified by the use of a GUI. See Ex. 1006, 8:30–36, 10:25–34, 10:53–67. Accordingly, in the combination of Beaumont and Hasan, wherein the preference database is replaced by the GUI decision tree, Petitioner has provided sufficient evidence at this juncture that the combination of Beaumont and Hasan teaches that the GUI obtains a policy, the preference number, for the direction of network traffic, where the GUI supports the setting of the policy using a decision tree representing rules.” slip op. at 19
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,645,517 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 7, 2025 · IPR2025-00826 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 1–23, finding a reasonable likelihood of obviousness for claims 13–22 over Glines and Gupta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–23 of the ’112 patent. Accordingly, we institute an inter partes review of the ’112 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 12. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Mowry further attests that “A POSITA would have understood Glines’s disclosure of providing content from an origin source would have included supporting more than one origin source (e.g., more than one website or content provider[)].” Ex. 1008 ¶ 262 (citing Ex. 1002, 12:11–22 (storing replica files that originate at an origin server 40), 13:21–14:3 (requesting “example.com”)). That statement, however, goes only to what Glines might be capable of doing, not to whether one would have modified Glines to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[o]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed inventions.”). Dr. “content providers” limitation, stating that it “would have been nothing more than replicating Glines’s teaching of storing and providing content associated with one origin server, with expected results.” Ex. 1008 ¶ 263. That statement, however, is unsupported, and moreover, does not explain how such replication would occur or what results would be expected. Prelim. Resp. 25–26. At this stage in the proceeding, Dr. Mowry’s testimony amounts to a “conclusory generalization” that does not provide the “reasoned explanation” sufficient to show that a limitation missing in the cited art was taught by the knowledge in the art. Arendi S.A.R.L v. Apple, Inc., 832 F.3d 1355, 1365 (Fed. Cir. 2016).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,021,112 - Exotec Product France SAS / Exotec North America Inc. et al. v. Opex CorporationAll claims unpatentablePTAB · Oct 28, 2025 · IPR2024-00850 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–12, 14, and 23–27 are unpatentable as obvious over Raizer and Hangzhou.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes an express construction” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we must determine whether one of ordinary skill in the art would recognize that Hangzhou’s disclosure of driving its auto-guided trolleys 200 under shelves 100 would improve the operation of Raizer’s system in the same way. For us to resolve this question in Petitioner’s favor, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). However, bodily incorporation, i.e., “an actual physical substitution of” Hangzhou’s auto-guided trolleys or operating software into Raizer’s system, is not required. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 23
Patent outcomesUS 11,472,632 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,472,632 - 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 - PTAB · Oct 15, 2025 · PGR2025-00002 · APJ Frederick C Laney · PGR · Adverse judgment
After Patent Owner disclaimed claims 1–78, the Board granted its motion for adverse judgment and terminated the post-grant review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under our rules, “[a] party may request judgment against itself at any time during a proceeding,” which includes “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018) (“there is no claim remaining for trial . . . when, as here, all of the challenged claims have been cancelled”). Thus, actions construed to be a request for adverse judgment include cancellation of patent claims such that a party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). Because Patent Owner has disclaimed all challenged claims such that no claims remain in the trial, we grant Patent Owner’s Motion to Terminate by Adverse Judgment.” slip op. at 2
NonePatents in suitUS 12,134,952
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.