- Lenovo (United States) Inc. / Motorola Mobility LLC v. Collision Communications, Inc.Institution deniedPTAB · Apr 11, 2025 · IPR2025-00285 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the same claims, grounds, arguments, and evidence had already failed the reasonable-likelihood threshold in the Samsung IPR, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . 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).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“35 U.S.C. § 315(c), which states as follows: JOINDER.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Because joinder under 35 U.S.C. § 315(c) is premised on an inter partes review having been instituted, and the Board did not institute review in the Samsung IPR to which Petitioner seeks to join, we deny the Motion for Joinder.” slip op. at 3
NonePatents in suitUS 6,947,505 - Whatfix Inc. v. Walkme Ltd.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00065 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–20 were not shown unpatentable under the Symons and Williams, Allen, or Krishnan and Radhakrishnan obviousness grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner proposes that a “person of ordinary skill in the art (‘POSITA’) in the field of the ’317 patent would have [had a] bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] or automation processes” or “[a]lternatively . . . would have [had] five to six years of experience working on NLP or automation processes.” Pet. 6 (citing Ex. 1003 ¶¶ 43–45). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’317 patent. Dec. 12. is inconsistent with the asserted Symons prior art and with factors (4)–(6) set forth in Daiichi Sankyo. PO Resp. 20–21 (citing Ex. 2002 ¶¶ 36–45). According to Patent Owner, the technology of the ’317 patent was “evolving rapidly” and the level of sophistication in the technology was “relatively low” in November 2017. Id. at 21–22 (citing Ex. 1004, 1–2; Ex. 1009, 2; Ex. 2002 ¶ 42; Ex. 2003 (transcript of June 26, 2024, deposition of Dr. Beigi), 141:2–9, 191:18–197:5; Ex. 2007; Ex. 2008). Further, Patent Owner contends, “[a]ctive work[ers] in the field, like Symons,[8] had less experience than [Dr. Beigi] proposed.” Id. at 22 (citing Ex. 2002; Ex. 2003, 112:12–24). Accordingly, Patent Owner argues, “[t]he evidence of record demonstrates a more appropriate level of skill would [be] a worker who had some education, formal or informal, in computer science and 1–2 years’ work experience with chatbots using NLP and/or automation processes.” Id. (emphasis omitted) (citing Ex. 1003 ¶ 44; Ex. 2002 ¶ 44; Pet. 5–6). “Under Patent Owner’s more appropriate analysis,” Patent Owner contends, “Dr. Beigi’s interpretation of what a POSITA would understand are overstated,” as “[h]e expects a POSITA to have ‘more experience’ (like himself) and apply a more ‘technically correct’ (in his view) understanding of the prior art than less skilled authors and artisans would have understood.” Id. (citing Ex. 2003, 141:2–9, 191:18–197:5). Nonetheless, Patent Owner argues, “[s]hould the Board continue to apply Petitioner’s” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “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))). construction” “[f]or purposes of this Petition.” Pet. 6. Patent Owner similarly represents that “[t]he parties agree that the claim terms used in the ’317 Patent claims have their ‘ordinary and custom[ary] meanings of terms’ as would be understood by a POSITA as of November 5, 2017.” PO Resp. 24. After reviewing the parties’ arguments and evidence, we determine that no express claim construction is necessary. See Realtime Data, 912 F.3d at 1375.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Ex. 1042 ¶¶ 35–37). Further, Petitioner asserts, “the Petition relies on Williams, not Symons, for its teachings of a ‘web-based’ target system.” Id. (citing Pet. 40). Petitioner does not, however, address Patent Owner’s main point, i.e., that the Petition relies on Symons’s illustration of its RPA bot purportedly filling in a text input field in the GUI of the Cronos Email Signature Generator for limitation 1[g] but relies on Symons’s illustration of its RPA bot interacting with a widget in Internet Explorer for limitation 1[h], despite the recitation in limitation 1[h] of “interacting with a widget in the GUI.” See, e.g., PO Resp. 38. Dr. Beigi acknowledges that, “[a]ccording to the ’317 patent, a widget is a GUI element,” and he concludes, with reference to Petitioner’s annotated version of the screenshot from page 13 of Exhibit 1006 reproduced above, that “Symon[s]’s GUI button is a widget in a GUI.” Ex. 1003 ¶ 100 (emphasis added) (citing Ex. 1001, 10:19–21). But neither the Petition, nor the Reply, nor Dr. Beigi’s testimony persuasively explains how a dialog box in Internet Explorer teaches or suggests a widget in the Cronos GUI. The Reply’s contention that “the Petition relies on Williams . . . for its teachings of a ‘web-based’ target system” is unavailing, because the issue is not whether either the Cronos program or Internet Explorer is “web-based”12 but whether Petitioner has identified a teaching or suggestion of an implementation of an automation process that fills in a text input field in a GUI of a web-based target system and interacts with a widget in the same GUI. 12 In this regard, we credit Mr. Zatkovich’s statement that Internet Explorer is local to and resident on the user’s computer. Ex. 2002 ¶¶ 161–162; cf. Ex. 2003, 219:24–220:5 (Dr. Beigi testifying that he is “not sure where this Windows software is running”).” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner’s reasoning fails to explain “how the combination of the two references was supposed to work.” See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). More specifically, Petitioner fails to explain how or why a person of ordinary skill in the art would be motivated to perform Krishnan’s automation process (i.e., fulfilling customer requests) by implementing an “automation process by interacting with a Graphical User Interface (GUI)” and “simulating user input to the GUI,” as purportedly taught by Radhakrishnan. Petitioner’s arguments are focused toward using Radhakrishnan’s RPA bot to perform Krishnan’s customer service requests (i.e., automation process) but fail to explain how Radhakrishnan’s RPA bot’s mirroring of the user’s operations (i.e., the simulation on the displayed user interface) as applied in Krishnan would work or provide sufficient reasoning to do so. See Personal Web, 848 F.3d at 993–994 (“[I]t does not imply a motivation to pick out . . . two references and combine them to arrive at the claimed invention”); In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“[M]ere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole”).” slip op. at 60
Patent outcomesUS 11,558,317 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,558,317 - PTAB · Mar 27, 2025 · IPR2025-00004 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–7, 9, 11–17, and 19, finding a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Therefore, to prevail in an inter partes review, Petitioner must explain how 6 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Petitioner asserts a person of ordinary skill in the art at the time of the invention of the ’313 patent would have “had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data.” Pet. 9 (citing Ex. 1003 ¶¶ 1–20, 37–41). Mr. Wechselberger supports Petitioner’s position and further testifies that “[a]dditional education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Ex. 1003 ¶ 40. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and does not dispute Petitioner’s proposed level of skill. Prelim. Resp. 6. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’313 Patent and the prior art of record.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also are persuaded based on the current record that Suzuki’s teachings bolster Peterka’s teaching of this limitation. See Ex. 1006 ¶¶ 33, 36, 43–48, 59, 72–77, 80–81, Figs. 4–6. Moreover, we are persuaded that a person of ordinary skill in the art at the critical time would have had reason to apply the teachings of Suzuki to Peterka. Specifically, we credit the testimony of Mr. Wechselberger, who testifies that (1) Peterka and Suzuki are in the same field of art and (2) both references disclose “periodically” changing keys that protect distributed content. Ex. 1003 ¶ 154 (citing Ex. 1006 ¶¶ 3, 12; Ex. 1005 ¶¶ 82, 110). Mr. Wechselberger explains that an ordinarily skilled artisan would have recognized the importance of identifiers “to differentiate amongst keys, and that providing unique values (such as key numbers) to keys would ensure that the system does not confuse keys.” Id. ¶ 153. According to Mr. Wechselberger, an ordinarily skilled artisan “would have had reasons to implement Peterka’s client in view of Suzuki to acquire and use ‘key information’ about a next key—its ‘remaining validity time’ and ‘key number’—at a set time before the expiration of the current key, and thereby facilitate timely key acquisition and use.” Id. ¶ 155 (citing Ex. 1006 ¶¶ 76–77, 80–81, 43–48) (emphasis added). At this stage of the proceeding, and crediting the testimony of Mr. Wechselberger, we are persuaded that the combined teachings of Peterka and Suzuki would have allowed a person of ordinary skill in the art “to ‘eliminat[e] the confirmation delay’ during key changes, and realize Peterka’s embodiment where “each client keeps track of the keys and their expiration times and actively requests new keys before the current keys expire so as to avoid service interruptions.” See Ex. 1006 ¶ 11; Ex. 1005 ¶ 105.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “[n]o claim term requires that the Board adopt an exact outer boundary construction because the prior art relied upon herein meets the claims under any plausible interpretation as detailed [in the Petition.]” Pet. 10. Patent Owner asserts that “[t]he Petition does not raise a dispute as to any claim construction issues” and “Patent Owner does not believe the Board need resolve any claim construction issues at this stage.” Prelim. Resp. 6 (citing Pet. 9–10). Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). There are no claim terms in controversy at this stage of the proceeding. Consequently, we need not construe any terms for our analysis.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,313 - PTAB · Mar 27, 2025 · IPR2025-00003 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–8, 10, 12, 14, and 16–20 for all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA): [W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner does not dispute the Petitioner’s proposal at this time. Prelim. Resp. 8. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the special case of key changes requested for security reasons outside of any fixed duration lifespan. Ex. 1001, 10:40–42. Considering, as we must, the disclosure of the ’178 patent as a whole, the scope of the disclosure is directed broadly to key rotation in general, whether due to scheduled key expiration times or otherwise. Id. at code (57), Fig. 3, 1:63–65, 2:23–25, 3:26–28, 9:47–49; see also Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“combine the teachings of Peterka, Suzuki, and Bocharov. Pet. 51–53, 57– 59, 66–67. Petitioner argues that Suzuki, like Peterka, discloses clients acquiring keys for multiple media segments, and provides implementation details, not disclosed in Peterka, regarding how to keep track of keys and their expiration times, and how to determine when a new key is required. Pet. 51–52 (citing Ex. 1003 ¶¶ 161–164). Petitioner argues that, given that Peterka and Suzuki are in the same field of art, one of ordinary skill would have been motivated to use the specific details of Suzuki in implementing the disclosure of Peterka. Id. at 53, 66 (citing Ex. 1003 ¶¶ 165–167, 202–204). Petitioner also argues that Peterka indicates that video content can be streamed using various protocols and bit rates, but does not provide implementation details. Pet. 57–59, 66–67 (citing Ex. 1003 ¶¶ 179–184, 204). However, argues Petitioner, one of ordinary skill in the art would have had reason to use the manifest files of Bocharov to provide the necessary information to handle different protocols and bit rates. Id. Petitioner argues that one of ordinary skill in the art would have been so motivated because implementing Peterka’s system to use Bocharov’s manifests would have provided an effective solution for allowing clients to switch between multiple versions of a media program having different encodings/qualities/bit rates. Id. Patent Owner does not specifically address the merits of combining Peterka, Suzuki, and Bocharov. See generally Prelim. Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Peterka, Suzuki, and Bocharov.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,313,178 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,089,946 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“presented in the petition . . . and any [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(a) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13
- BurdenNot shown unpatentable
“We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,814,071 - Whatfix Inc. v. Walkme Ltd.No claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01379 · APJ Charles J Boudreau · IPR · Final written decision
The Board held claims 1–6, 9–16, and 18–21 not shown unpatentable on the asserted obviousness grounds, because Petitioner failed to prove unpatentability by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Determining whether an invention would have been obvious under” slip op. at 13
- BurdenFwd all claims patentableNot shown unpatentable
“the claims challenged in the inter partes review are unpatentable. For the reasons discussed below, we conclude that Petitioner has not established by a preponderance of the evidence that any of the challenged claims are unpatentable.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 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) (citation omitted); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 12
Patent outcomesUS 11,258,732 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,258,732 - Whatfix Inc. v. Walkme Ltd.Some claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01368 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8, 12, 13, 16, 19–23, 26, 29, and 31 are unpatentable over Symons and Williams; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner proposes that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] and automation processes. Alternatively, a POSITA would have five to six years of experience working on NLP and automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 50–52). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’664 patent. Dec. 12.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“We interpret claims using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). However, “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, and “[i]n such cases, the inventor’s lexicography governs.” Id. at 1316. A patentee may “choose to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term that could differ in scope from that which would be afforded by its ordinary meaning.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). We only need to construe the claims to the extent necessary to resolve the parties’ disputes. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 18
- ExcludeGranted in part
“Exhibits 2015–2017 are three comments made on the Internet in association with the Symons Article. These comments are also shown in Exhibit 2005. According to our rules, “[s]upplemental evidence is not filed at the time of the objection, but simply served, and is filed only in support of an opposition to a motion to exclude.” CTPG14 79 (citing 37 C.F.R. §§ 42.64(a), 42.64(b)(2)). Because no motion to exclude was filed by Petitioner, we agree with Petitioner that Patent Owner improperly filed Exhibits 2014–2017. However, as described above, the comments in Exhibit 2015–2017 are already part of the record in Exhibit 2005, and Petitioner has not filed a motion to expunge Exhibit 2005. Therefore, we are not aware of any harm to Petitioner by leaving these Exhibits in the record, as the information is 14 PTAB Consolidated Trial Practice Guide, November 2019 (the “CTPG”), available at: https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. already there. See Tr. 100:8–14. Moreover, retaining these Exhibits in the record will avoid confusion in the record and serve the public interest in a full and complete record. Accordingly, we will expunge only Exhibit 2018, as agreed by the parties, and waive the requirements of 37 C.F.R. § 42.64(b)(2) to the extent necessary to retain entry of Exhibits 2014–2017.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We need not determine whether Symons alone teaches this limitation, because we are persuaded that Petitioner has sufficiently shown that the combination of Symons and Williams teaches this limitation. We agree with Petitioner that, by disclosing that “chatbots can engage in natural language dialog with the caller and discern, through a series of interactions, the nature of the call[,] . . .capture information required to further handle the request . . [and] then trigger a robot, passing the required information to the robot to complete the request,” Williams teaches “determining . . . an automation process,” as recited in limitation 1[c]. See Pet. 19 (citing Ex. 1011, 3) (some emphasis omitted); see Ex. 1003 ¶ 95. We disagree with Patent Owner’s arguments that the combination is “ill-defined.” Sur-reply 8–9. Petitioner argues that the combination of Symons and Williams “results in a chatbot-RPA bot system capable of handling a user request for automated email signature generation along with other requests, such as automated generation of an electronic letterhead or an electronic invoice.” Pet. 20 (citing Ex. 1003 ¶ 98). In other words, in addition to the capability of handling the automated email signature generation (as taught in Symons), the combined chatbot-RPA bot system can handle other requests as well (as taught in Williams). Further, we agree with Petitioner that “[t]he ability to handle multiple requests would expand the capabilities and flexibilities of the chatbot-RPA bot” as well as “improv[e] costs, time, and capabilities.” Id. at 19–20 (citing Ex. 1003 ¶¶ 95, 96, 99). Both Symons and Williams support this argument. Ex. 1011, 2 (stating that RPA “support[s] repetitive, labor-intensive and transactional business processes,” that “software robots [are] an attractive way to drive operational cost reduction,” and that “[a]utomation through RPA can offer a return on investment (ROI) often ranging between 30 and 50 percent”); id. at 5 (stating that “[d]eployment of these cognitive tools promises new levels of productivity and innovation–freeing human workers to focus on higher-value activities and bringing industrial-level quality, consistency and auditability to business processes”); Ex. 1004, 2 (stating that “combining [RPA bots and chatbots] to automate processes can tremendously boost productivity in multiple organizations” and that “[RPA bots] reduce[] costs and human efforts”). Patent Owner’s argument that “[n]either Symons nor Williams suggest using a single chatbot-RPA to handle multiple requests at once in the same conversation thread” (PO Resp. 38) is not commensurate with the claim language, which does not require a single automation process (e.g., chatbot-RPA) to handle multiple inputs (e.g., multiple requests in the same conversation thread). See Reply 9–10. Regardless, however, we are not persuaded that Williams does not suggest using a single chatbot-RPA to handle multiple requests, as argued by Patent Owner. Sur-reply 9; see Ex. 1011, 2 (stating, for example, that “[t]he most common processes enabled by RPA today include back-office administrative processes and workflow within IT, finance, procurement, and human resources functions” and that “RPA enlists software robots to perform complex, nested routines that cut across multiple applications and interact with these systems”); id. at 3 (“Through several scripted questions, the virtual agent can surmise that the supplier is asking for status on their payment and, thus, trigger an RPA robot to access the appropriate enterprise resource planning (ERP) backend system, validate the caller’s details, retrieve necessary information, and provide status back in real-time to the supplier.”).” slip op. at 35
Patent outcomesUS 10,819,664 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,819,664 - Cellco Partnership D/B/A Verizon Wireless / T-Mobile USA, Inc. et al. v. Aspen Networks, Inc.Institution deniedPTAB · Mar 17, 2025 · IPR2025-00008 · APJ Donald E Daybell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–28 were unpatentable over Tagg or Kottilingal and Politis.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“There is, however, a consistent thread that flows through the relevant disclosures of the specification; namely, that the “state involving the SIP sequence” is maintained throughout a dialog. Ex. 1001, 5:1–38 (step 210); see also id. (step 160). Using the method of Figure 4, including steps 160 and 210 and maintaining the SIP signaling state, is how the ’554 Patent discloses that calls are not broken or dropped. See, e.g., id. at 7:10–25. Maintaining the “state” of the SIP signaling sequence includes (but is not limited to) the teachings that a “SIP signaling sequence number” is maintained, as well as the details of how that number is maintained, as set forth in the specification. We find that the state of the SIP signaling sequence as that term is used in the specification refers to the rules (or paradigm) used to identify a collection of SIP signals as a “SIP signaling sequence,” and in particular the rules used to identify the next SIP packet received as belonging to a sequence of packets previously received. One key to the disclosed invention discussed in the specification is the concept that the invention prevents a call 3:45–4:9. The specification contends that the invention accomplishes this goal by configuring the packets involved in a VoIP call such that the receiving device (e.g., a SIP server) is able to recognize those packets as belonging to the same call, even though the packets are received over different paths. Id. at 7:35–50; 7:60–8:3. The particular way that the receiving devices are able to recognize that the packets are part of the same call is, per the claims, because the SIP signaling sequence is maintained after a network switch. Id. at 8:27–29. Thus, where a sequence of SIP signals uses numbers such as cseq values, there is a rule for identifying what the next signal in the sequence is. Ex. 1001, 5:1–38. A receiving device that knows the rule can identify an incoming packet as the next packet in the same signaling sequence as previously received packets, by applying the rule. Id. at 7:35–50. The specification provides one example rule, that the next SIP signal bears a monotonically-increasing cseq number. Id. at 5:1–38. But there could be other such rules as well. For example, the value could be monotonically decreased, or the value could be determined using some other formula.8 The claims also do not require that the sequence of SIP signals use “numbers” as sequence identifiers.9 Other labeling paradigms could be possible as well, 8 Patent Owner’s litigation claim construction improperly imports implementation details from the preferred embodiment, such as “cseq numbers” and the limitations that these numbers “monotonically increase” for new transmissions, or be “preserved” for re-transmissions. While such embodiments would be one way of maintaining a SIP signaling sequence, the specification does not clearly limit the invention to only these embodiments. 9 Petitioner’s litigation claim construction improperly imports the limitation from the preferred embodiment that the SIP signaling sequence must be” slip op. at 14
- Skill levelSkill level board ownDecided for patent owner
“as of the time of the invention of the ’554 Patent “would have been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement” and would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in electrical engineering or computer science and two years of experience; or by obtaining a Master’s degree in electrical engineering or computer science, but having only one year of experience; or by having no formal education but experience in network service plan provisioning systems of at least four years. Pet. 10. 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’554 Patent was filed before the effective date of the relevant amendment, the pre- AIA version of §103 applies. that a POSITA must specifically have “been familiar with designing rules for implementing policies for service plans for use of an access network and provisioning those rules to network elements for policy enforcement.” Prelim. Resp. 17–18. At this juncture, we adopt the agreed-upon portion of Petitioner’s definition, without the specific requirement relating to designing rules. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that the applied prior art may reflect an appropriate level of skill). Our analysis would be the same under either definition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has not shown a reasonable likelihood of success in establishing that any claim of the ’554 Patent is unpatentable, and thus we decline to institute review. The Petition is denied, and inter partes review is not instituted.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s view of Tagg. At best, the cited portions of Tagg disclose that SIP is used by endpoint 1512 to communicate with SIP server 1500, and by the SIP server to communicate with SIP proxy 1504. Figure 15 discloses that SIP is used for both of the paths from endpoint 1520 to SIP server 1500, via the WWAN or the WLAN. Figure 15 further discloses that SIP is used for the path from SIP server 1500 to SIP proxy 1504. But Figure 15 and the accompanying text are silent about any “sequences” of SIP signals at all, much less whether any such “sequences” are maintained, as required by the language of limitation 1.6. Ex. 1005 ¶¶ 324–346, Fig. 15. Instead, Tagg’s specification simply discloses that SIP is used to perform call management functions. Id. ¶¶ 245–247. Tagg’s cases 1 and 6, relied on by Petitioner, teach that Tagg’s server can ensure that the end user appears to the rest of the world (i.e. the devices upstream of the SIP server) as if no network change is being made. Ex. 1005 ¶ 320. Tagg further teaches that either “make before break” or “make and break” schemes may be used. Id. But these cases do not explain how any SIP signaling sequences are used, much less how or even that any SIP signaling sequence is maintained when a network switches. At most, Tagg teaches that each path will have an IP (Internet Protocol) address, which may be the same or different for each path. Id. ¶ 288. But IP addresses are part of the IP disclosing or suggesting that IP addressing schemes are maintained or otherwise accounted for in a network switch, that would not be sufficient to disclose or suggest that SIP signal sequences are maintained. Furthermore, under our construction of limitation 1.6, it must be shown that the same rules or paradigm used to identify that an incoming SIP packet is the next SIP packet in a sequence, regardless of whether that packet is transmitted on the first network path or the one of a plurality of alternative network paths. The Petition is silent on this point. The closest Petitioner comes is the assertion that Figure 15 depicts preservation of “the same SIP signaling sequence,” with the Petitioner’s explanation being that Tagg allows simultaneous connections across a WWAN and a WLAN, and that “POSITAs would have understood that Tagg’s SIP protocol uniformity in directionality teaches that a ‘SIP signaling sequence . . . is maintained.’” Pet. 39–40.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,009,554 - Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01342 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds; it found a reasonable likelihood that claim 1 would have been obvious over Whitehead.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner contends that one motivation for combining would have been that Marcus ’904 includes additional disclosure of targeting media programming to specific users, which would lead to better customization of media programming by Cristofalo. Pet. 38 (citing Ex. 1002 ¶ 122). This assertion is vague and unexplained. Petitioner also asserts that Marcus ’904 provides “additional implementation details” on how final media programming is generated and formatted for display. Id. at 38–39 (citing Ex. 1002 ¶ 123). We fail to see, at this stage, how merely disclosing additional details would motivate a skilled artisan to combine references. If we were to agree with a proposed combination merely because one reference includes details another does not, this could “swallow all of patent law.” Cf. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (addressing patent eligibility). Finally, Petitioner contends that combining Marcus ’904’s advertising sources would unlock new revenue sources for Cristofalo. Pet. 39 (citing Ex. 1002 ¶ 124). Patent Owner argues that this rationale appears to be superfluous, since Cristofalo already discloses targeting advertising to users. Prelim. Resp. 26 (“Cristofalo’s receiving system ‘already’ assembles the programming with advertisements.”); see Pet. 38 (referring to Cristofalo’s “targeted advertising”). We tend to agree at this stage. Thus, we question Petitioner’s rationale to combine Cristofalo with Marcus ’904.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[n]o express constructions are required.” Pet. 9. Patent Owner also proposes no express constructions. We agree that no claim terms require construction at this stage.” slip op. at 7
Claim construction§ 103 obviousnesscites AlicePatents in suitUS 8,886,753
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.