- PTAB · Mar 13, 2025 · IPR2024-01305 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–9 over all asserted grounds, finding a reasonable likelihood that the challenged claims would be shown obvious.
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). 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 that follow, we institute an inter partes review as to claims 1–9 of the ’687 patent on all grounds of unpatentability presented.” slip op. at 2
- Parallel petitionsOther
“1 Of note, Petitioner concurrently filed another petition challenging claims 19–25 and 27–30 of the ’687 patent in IPR2024-01307. Pet. 3–4; Paper 3, 3. Petitioner also filed a ranking of the two petitions in which it ranked the petition in IPR2024-01307 first and the instant Petition second. Paper 3, 3. Notwithstanding, Patent Owner does not put forth any arguments seeking discretionary denial under 35 U.S.C. § 314(a) related to Petitioner’s use of more than one petition against the ’687 patent. Moreover, we are satisfied by Petitioner’s stated reasons for filing two petitions. See Paper 3, 2–3.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 13 (citing Ex. 1001 ¶¶ 72–76). Patent Owner cites testimony from Dr. Rubin and contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 8 (citing Ex. 2001 ¶ 99). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 101), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’687 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“ordinary meaning. Pet. 6. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 37 (citing Ex. 1001 ¶ 352). Thus, Petitioner argues that an “event socket” is “a socket where information about one sporting event is provided to a VCD.” Id. Patent Owner states that “[e]xcept for the ‘event socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.” We determine that no other aspects of the challenged claims require explicit construction. See, e.g., 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 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,805,687 - PTAB · Mar 12, 2025 · IPR2024-01256 · APJ Lisa A Murray · IPR · Institution
The Board instituted review of claims 1–6, 10–14, 16, and 17 because Petitioner showed a reasonable likelihood that Ahn and Chaudhri render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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 that follow, we institute an inter partes review as to claims 1–6, 10–14, 16, and 17 of the ’727 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“have “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 5 (citing Ex. 1003 ¶ 28). In addition, Petitioner states that additional years of experience could substitute for an “advanced-level degree” (and vice versa). Id. Patent Owner notes that it does not agree with all aspects of Petitioner’s proposed level of ordinary” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construed in order to resolve the controversy currently before us. Pet. 5; Prelim. Resp. 5. Petitioner, however, asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct.” Pet. 11 (quoting Ex. 1009, 3); Ex. 1003 ¶ 36. Petitioner further asserts that one of ordinary skill would have understood that translucency, i.e., “not transmitting detail[,]” is a type of blurring. Pet. 11 (citing Ex. 1009, 6 (defining “translucent” as “allowing light, but not detailed images, to pass through; semitransparent”)); Ex. 1003 ¶ 36. Patent Owner states that it does not agree with Petitioner’s proposed interpretation of blurring, but does not propose any alternative construction and presents argument challenging the grounds based on Petitioner’s proffered interpretation. Prelim. Resp. 21 n.5. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. We further note that for the term “distance magnitude [of the gesture],” Patent Owner represents that Petitioner has argued in related district court proceedings that this term means “length [of the gesture].” Prelim. Resp. 5. Patent Owner contends that “the plain and ordinary meaning of this term is readily understandable and Patent Owner does not believe formal construction to be necessary to deny institution[.]” Id. On the present record, Petitioner’s proposed construction appears correct, and for purposes of institution, we construe “distance magnitude” as “length” in our analysis of limitations [1.d.i] and [1.d.ii] below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“c) Analysis For purposes of this Decision, we find that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill in the art would have had a reason to combine the teachings of Ahn and Chaudhri. We do not find Patent Owner’s arguments to the contrary persuasive. In particular, we find unpersuasive the argument that the proposed modification “does not flow” from the cited prior art because it purportedly combines elements of different embodiments of Ahn and relies on Chaudhri’s blurred foreground to teach blurring the background on a display. See Prelim. Resp. 38. At the heart of Patent Owner’s arguments is the characterization of Petitioner’s obviousness theory as that of a significant modification of Ahn to incorporate specific interface adjustment elements from Chaudhri. Prelim. Resp. 48−58. This is not what the Petition states. The Petition reads: “the Ahn-Chaudhri combination represents the predictable and expected result of applying, in the context of Ahn’s touch screen mobile device, the user interface state transition techniques described by Chaudhri ’842.” Pet. 18 (emphasis added). Petitioner explains that “[t]he fundamental aspects of Ahn’s disclosure would remain intact[.]” Id. Therefore, Patent Owner’s arguments alleging modifications of Ahn’s operation are unpersuasive at this juncture. And, to the extent Patent Owner alleges that there may be drawbacks to the techniques in Chaudhri, we disagree because tradeoffs do not necessarily undermine Petitioner’s proffered combination of teachings, given the articulated benefits on the present record, such as to indicate user and the background. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). As to whether the indication of user progress would be imperfect or not as helpful in differentiating between objects as Patent Owner argues, we note that Chaudhri’s technique need not be the most optimal technique for accomplishing visual differentiation, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,740,727 - PTAB · Mar 6, 2025 · IPR2024-01309 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 19–25 and 27–30, finding a reasonable likelihood that claims in both § 103 grounds would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’697 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this early stage, therefore, for the terms which are not contested (all except for the limitation 27.3 means plus function term, addressed below) we use Petitioner’s proposed constructions for the means-plus-function terms with one exception. Specifically, based on the structure and dependency of claim 30, we determine preliminarily that the preamble of claim 30 is non-limiting and does not require construction as a means-plus-function limitation. We use the ordinary and customary meaning of the other claim terms and we decline to provide an express construction of any other claim term. slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues “under” Petitioner’s proposed construction of “socket,” the Petitioner is deficient. Prelim. Resp. 39–40. At this early stage, Patent Owner does not dispute Petitioner’s construction for either “event socket” or “socket,” and, indeed, applies Petitioner’s proposed construction of “socket.” Id. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.”” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,425,697 - PTAB · Mar 6, 2025 · IPR2024-01308 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–9 on all asserted grounds, finding a reasonable likelihood that claims 1, 7–9 are obvious over Ellis and Spivey, claims 2–6 over Ellis, Spivey, and Herzog, and claims 1–9 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’697 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. We, therefore, consider the merits of the instant petition, and, for the reasons given below, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“At this early stage, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 37) are not disputed by Patent Owner. Prelim. Resp. 10. Neither party provides an express construction for any other claim term. See generally Pet.; Prelim. Resp. “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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this preliminary stage in the proceeding, we use Petitioner’s proposed construction for “socket” and 4 POSA and POSITA refer to a person of ordinary skill in the art. “event socket” and the ordinary and customary meaning of the other claim terms. We decline to provide further analysis or an express construction of any other claim term as doing so is not needed to resolve the dispute between the parties.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,425,697 - PTAB · Feb 19, 2025 · IPR2024-01230 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–5 for all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“discretionary denial under § 325(d). The Notice Regarding Amendment Options explains that the Board may deny institution under § 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding. 84 Fed. Reg. at 16,657 (emphasis added). We find that the EPR is not in a more advanced stage as compared to this proceeding, and therefore does not weigh in favor of the Board exercising discretion to deny institution, despite its overlapping issues with those in the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–5 of the ’336 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“the art.7 On consideration of the record, specifically the patent and cited prior art, we find Petitioner’s proposed educational levels and subject matter (bachelor’s degree in electrical or mechanical engineering) more appropriate. Specifically, Patent Owner’s reference to a degree in computer science does not appear relevant to the claimed electro-mechanical device. We find Patent Owner’s proposed hands-on experience more persuasive as Petitioner’s definition is too vague (“generally familiar”) to assist our determination. On this record and for the purposes of institution, we find that a person of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, would have a bachelor’s degree (or equivalent) in electrical engineering or mechanical engineering, and would have two years of experience in designing and/or implementing hardware components for computers, servers, and/or other electronic devices. We further determine that more experience could compensate for the absence of a bachelor’s degree. The level of skill is reflected by the testimony of the parties’ declarants and the prior art of record.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We determine that the plain meaning of claim 1 supports Patent Owner’s interpretation. Claim 1 recites a body, provided with a fan in center of the body, an illumination area on at least two sides of the fan at top of the body, a power socket and a first connector on one side of the body, and a second connector on another side of the body . . . such that when the power socket on the one side of the body is supplied with power, the fan and the illumination area of the body are respectively driven into rotation and illumination . . . Ex. 1001, 4:5–9 (emphasis added). Claim 1 expressly recites three body locations: “the top of the body,” “one side of the body,” and “another side of the body.” Id. “A power socket and a first connector” are listed together in the same clause “on one side of the body.” Id. The plain language of the claim further supports that “one side of the body” includes both power socket and first connector, as the limitation is repeated later in the claim: “the power socket on the one side of the body.” See id. at 4:12 (emphasis added). The location of the second connector is defined in relation to the one side with the first connector. See id. at 4:5–9. Accordingly, the plain meaning of claim 1 defines three sides of the claimed body, a top of the body (with an illumination area on two sides of the fan), one side of the body with a power socket and a first connector, and another side of the body with a second connector. See id. For purposes of this Decision, we determine that no other claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly necessary to resolve the controversy.”)).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,690,336 - Apple, Inc. v. Omni Medsci Inc.All claims unpatentablePTAB · Feb 14, 2025 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Remand
On remand, the Board determined claims 1–23 unpatentable, finding claims 3–6 and 8–14 obvious under the asserted combinations and leaving the prior findings on other claims intact.
RulingsRemand decision- RemandOther
“No appeal was taken as to claims 1, 2, 7, and 15–23. Consistent with the Federal Circuit’s Mandate, we have reviewed the merits and determine 3–6 and 8–14 are unpatentable, and recognizing that all other claims have previously been determined to be unpatentable, we determine that claims 1–23 are unpatentable.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our mandate is to consider the argument the Court determined we did not consider in the Petitioner Reply, which argument, as each party acknowledges, both parties had the opportunity to discuss in the briefs that are in our current record. Under the circumstances, we determine that no additional briefing is required to carry out that mandate.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Final Decision, we determined that the term “identify an object” in claims 3 and 8 is distinguished from the term “detect an object,” e.g. as in claim 1. Final Dec. 8–10. The Court affirmed our construction of “identify an object” to mean “to recognize or establish an object as being a particular thing.” Fed. Cir. Dec. 10. The Court remanded, however, for further consideration of a “properly raised” argument Petitioner advanced in the Petitioner Reply with respect to our construction, referred to by the Federal Circuit as “the alternative argument.”. Id. at 2, 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner counterargues that it is not required to show why a person of ordinary skill would have considered every permutation of these references together and that it provided specific reasons for including features of Isaacson into Lisogurski’s device. Pet. Sur-reply 24–25. According to Petitioner, a person of ordinary skill would have had reason to incorporate Isaacson’s sensor (an arrangement of LEDs and detectors) into Lisogurski’s device, which taught that any known sensor layout could be used. Id. (citing Ex.1011, 17:39–45; Ex.1003 ¶¶ 239–240). Petitioner further argues that the ordinarily skilled artisan would have looked to Isaacson because it discloses a known arrangement for that the sensor component of Lisogurski’s device, and because it also taught solutions to potential problems identified in Lisogurski (e.g., with skin pigmentation). Id. (citing Pet. 68–69; Ex.1003 ¶ 243; Ex.1063, 7:59–62, Fig. 1).” slip op. at 9
Patent outcomesUS 10,517,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,517,484 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01114 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 2, 27–30, 32–36, 38, 40, 42–44, 46, 47, 52, 54, 57, and 59, exercising discretion because this was the fourth-ranked parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. 10 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 24–41. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 7), yet Petitioner provides a five-page summary of the ’754 patent and its prosecution history (see id. at 2–6). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 7–19), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01086 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 2, 8, 10, 16, 24, 26, and 224 because this petition ranked last among seven parallel petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01118 · APJ Nathan A Engels · IPR · Institution
The Board denied institution of IPR2024-01118, finding seven parallel petitions unjustified and exercising discretion to deny this sixth-ranked petition.
RulingsInstitution decision- Parallel petitionsInstitution denied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot 12 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. As a consequence, we reviewed the content of the common sections— i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 26–43. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 8–9), yet Petitioner provides a six-page summary of the ’754 patent and its prosecution history (see id. at 3–8). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 9–21), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01115 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. We do not agree, however, that seven petitions are justified.8” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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 that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754
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.