- Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 22, 2025 · IPR2025-00123 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of inter partes review of claims 1–8 and 13–25 under § 314(a), finding the trial date and district court investment outweighed Petitioner’s stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The District Court recently denied Petitioner’s motion to stay without prejudice. Ex. 2003, 3. The District Court stated that Petitioner’s motion “is premature” because the Board has not decided “whether or not to institute inter partes review.” Id. We decline to speculate based on the record in this case whether the District Court would grant a renewed motion to stay the District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“G. Summary On balance, we determine that Fintiv factors 1–6 favor discretionary denial of institution. Specifically, as discussed above, factors 2, 3, and 5 each weigh in favor of discretionary denial, factor 4 weighs strongly against discretionary denial, and factors 1 and 6 are neutral. We determine that the projected trial date (at least six months before the projected statutory deadline for a final written decision) and the parties’ significant investment in the District Court Litigation outweigh Petitioner’s stipulation. Thus, based on our holistic view of the Fintiv factors, we exercise our discretion under § 314(a) to deny the Petition. III. CONCLUSION For the reasons discussed above, we exercise our discretion under § 314(a) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 10
Discretionary denialPatents in suitUS 8,745,749 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentablePTAB · Apr 16, 2025 · IPR2024-00110 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 2, and 4–6 are unpatentable as obvious over Kim, Invisalign, and Salah.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The parties agree that the proposed levels of ordinary skill in the art are “not materially different.” PO Resp. 4; Reply 2. The difference, essentially, is that Patent Owner more explicitly describes the members on the interdisciplinary team, and argues that it would be necessary to consult with such individuals, particularly with persons experienced in dentistry or orthodontics, whereas Petitioner’s proposal states that one “could” consult with such individuals. However, Patent Owner’s argument that it would be necessary for a person of ordinary skill in the art to consult with an individual having experience in dentistry and/or orthodontics is narrower than Patent Owner’s proposed level of skill in the art, which describes “individuals familiar with medical imaging, dental imaging, dentistry, and/or orthodontics.” PO Resp. 4 (emphasis omitted, emphasis added). Neither party presents any argument explaining how the differences in the respective educational backgrounds and work experience in the proposed definitions affect the dispute. Having considered the parties’ respective arguments and the evidence of record, we adopt a modified version of the parties’ proposals, and determine for purposes of this Decision that a person of ordinary skill in the art would have an advanced degree, such as a Masters’ Degree or Ph.D. in computer science, computer engineering, electrical engineering, or a related field, with at least two years of work in computer vision, image analysis, medical imaging, or related areas. Further, a person of ordinary skill in the art could have less education but significant professional experience in one or more of these fields, and could be a member of an interdisciplinary team which would have included individuals familiar with medical imaging, dental imaging, dentistry, and/or orthodontics.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are satisfied that Dr. Foroosh qualifies as a person of ordinary skill in the art. First, Dr. Foroosh has the required educational background, with, for example, a Bachelor of Science in Electrical Engineering, a Master of Science in Electrical Engineering, a Master of Science in Computer Science and Engineering, and a Ph.D in Computer Science. Ex. 1003, 7; Ex. 1002 ¶ 3. Second, Dr. Foroosh has the required work experience, with, for example, research in machine learning, deep learning, and neural networks, image and video processing and analysis, and computer vision. Ex. 1003, 2, 4–8; see also id. at 9–13 (list of projects), 14–29 (list of publications), 32 (list of interdisciplinary research); Ex. 1002 ¶¶ 2–5 (describing work experience), 6–9 (describing research experience). Dr. Foroosh has also been part of interdisciplinary research efforts including those relating to the medical or dental fields, such as, research on the intersection of computer vision and augmented reality in medical and surgical interventions. Ex. 1003, 32; Ex. 1002 ¶ 12. Dr. Foroosh describes a research project, Modeling and Visualization of Muscoloskeletal Structures in Dental CT-Scan (2006–2007), where he “developed algorithms for [threedimensional (‘3D’)] registration, modeling and visualization of maxilla and mandible of patients for dental surgery using Computer Aided Tomography (CAT) scanning.” Ex. 1002 ¶ 6. He describes another project for the National Science Foundation, which “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans.” Id. ¶ 7. He was also a co-author on Alignment of Maxillofacial CT Scans to Stone- Cast Models Using 3D Symmetry for Backscattering Artifact Reduction, Proceedings of Medical Image Understanding and Analysis Conference (MIUA) (2006), and an adviser for a dissertation directed to “Sub-pixel Registration in Computational Imaging and Applications to Enhancement of Maxillofacial CT Data,” which “focused on registration and alignment of 2D images and 3D digitized data obtained by dental CT scans and dental imprints of a patient.” Id. ¶¶ 8, 9. Although Dr. Foroosh is not a dentist or orthodontist, we determine that the breadth of his background, as fully set forth in Exhibit 1003, qualifies him to provide testimony from the perspective of a person of ordinary skill in the art. In short, we agree with Petitioner that Dr. Foroosh has “ample experience with medical and dental imaging,” as set forth above. Reply 2 (citing Ex. 1002 ¶¶ 6–9; Ex. 1003, 14, 15, 21, 26, 32). Moreover, we are afforded broad discretion in assigning weight that is to be accorded expert testimony. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no reasonable trier of fact could have done so.”); see also CTPG6 34–36. In the analysis that follows, when applicable, we weigh the credibility of Dr. Foroosh’s testimony, including with respect to Patent Owner’s arguments regarding Dr. Foroosh’s testimony on the Invisalign reference, and provide our reasons therefore.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“proposed constructions. As there is no dispute between the parties, and after reviewing the complete record, we determine that express construction of “interior tooth outline,” “exterior tooth outline,” and “shape of an orthodontic aligner” is not necessary for purposes of this Decision. Further, Patent Owner does not dispute Petitioner’s interpretation of limitations 1(1) and 1(2), or Petitioner’s identification of the corresponding function and structure in limitation 1(3). We agree with Petitioner that step 2 of claim 1 recites a conditional limitation, that, if met, is not needed to be performed. See, e.g., Cybersettle, Inc. v. Nat’l Arbitration Forum, 243 F. App’x 603, 607 (Fed. Cir. 2007) (“It is of course true that methods steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). This is supported by the Specification: In one embodiment, the dentition image is the aligner image. In other words, the same updated image makes it possible not only to see the aligner outline 28 but also to see the dentition outline 16, through the aligner (FIG. 3). This single image therefore makes it possible to compare aligner 20 and dentition outlines. Advantageously, readjustment step 2), described later, is not needed. Ex. 1001, 6:15–20 (emphasis added). Further construction of limitations 1(1) and 1(2) is not necessary for purposes of this Decision.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“f) Conclusion Independent Claim 1 Therefore, we determine that, on the complete record, Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combination of Kim, Invisalign, and Salah. 5. Remaining Claims Petitioner contends that the combination of Kim, Invisalign, and Salah teach the additional limitations of claims 2 and 4–6 and, in support, identifies certain passages and figures in the references and explains their significance with respect to the corresponding limitations. Pet. 34–46. Patent Owner does not separately challenge these contentions. See generally PO Resp. We have reviewed Petitioner’s contentions, which we find persuasive and adopt as our own. Therefore, we determine that Petitioner has also shown those claims to be unpatentable by a preponderance of the evidence. Id.” slip op. at 49
Patent outcomesUS 11,109,945 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,109,945 - Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentablePTAB · Apr 16, 2025 · IPR2024-00052 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 2, 4, 7, 8, and 13–16 are unpatentable as obvious over Kim, Invisalign, Salah, and Maninis.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“conclusion based on underlying factual findings, including whether the reference was publicly accessible. Jazz Pharms., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). “A reference is considered publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). “If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). In an inter partes review, the petitioner bears the burden of establishing that a particular document is a prior art printed publication. Jazz Pharms., 895 F.3d at 1356 (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the gap between them, can be resolved even with simple edge detection techniques,” so “[a]pplying more advanced techniques, such as the deep learning taught by Salah and Maninis, would have been expected to resolve the locations of each tooth’s edge and the corresponding aligner edges with even greater precision and accuracy.” Ex. 1048 ¶ 21. Further, Dr. Foroosh provides testimony that Maninis “teaches how contours of different strengths may be used advantageously to discern shapes of objects (and parts of objects) at varying levels of detail.” Ex. 1048 ¶ 24; see also Ex. 1002 ¶¶ 59, 97, 131. Accordingly, we are not persuaded that Salah teaches away from the combination.” slip op. at 64
Patent outcomesUS 11,049,248 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,049,248 - Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Apr 11, 2025 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Remand
On remand, the Board held claim 12 unpatentable over Grotmol and Hickman and denied the motion to amend because proposed substitute claims 21–29 were unpatentable.
RulingsRemand decision- RemandOther
“Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Written Decision regarding the level of ordinary skill in the art. See generally DR Req. Upon consideration of the full record including the arguments in Patent Owner’s Request for Director Review, we maintain that determination here. More specifically, considering the subject matter of the ’344 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. See 2024 Final Dec. 10–11. Accordingly, with that exception, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“the differences as compared to claim 1, including those findings and determinations set forth in a section of the 2024 Final Written Decision titled “Overview—Claims 6, 11, and 12” (id. at 65–67) and in the sections titled “Claim 12” and “Conclusion—Claims 6, 11, and 12” (id. at 83–86). Further, based on the complete record now before us, including Patent Owner’s Request for Director Review, for the reasons given in our 2024 Final Written Decision and our additional reasons given herein, we determine that Petitioner has shown by a preponderance of the evidence that the Grotmol and Hickman combination teaches the limitations of claim 12.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3
Patent outcomesUS 11,238,344 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,238,344 - Juniper Networks, Inc. v. Monarch Networking Solutions LLCAdverse judgmentPTAB · Apr 1, 2025 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed motion for adverse judgment after claims 1 and 5-8 were cancelled in reexamination, and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“When all claims at issue in an IPR are cancelled in a concurrent reexamination, the Board “construe[s] [the] cancellation of all claims . . . as a request for adverse judgment.” Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2-3 (PTAB Apr. 14, 2016). ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion for Adverse Judgment is GRANTED; FURTHER ORDERED that Adverse Judgment is entered; and FURTHER ORDERED that this inter partes review is terminated.” slip op. at 2
NonePatents in suitUS 8,451,845 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Mar 31, 2025 · IPR2025-00030 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR of claims 1–20 on all six asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11, 5–6. These factors relate to “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 20
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“they “apply a preponderance of the evidence standard to determine patent validity, which is a lower burden of proof than the clear and convincing evidence standard required in district court.” Prelim. Resp. 1. According to Patent Owner “[t]his discrepancy undermines the presumption of validity afforded to issued patents and makes it easier to invalidate a patent in an administrative forum than in a judicial proceeding.” Patent Owner cites no authority or evidence to support this argument. Moreover, the Supreme Court has held that the decision to grant a patent “is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the [U.S. Patent and Trademark Office’s (“USPTO’s” or “PTO’s”)] authority to conduct that reconsideration.” Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 584 U.S. 325, 334–35 (2018).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also explains why a person of ordinary skill would have been motivated to combine the cited references, again citing annotated figures from the cited references, specific disclosures from the references, and supporting testimony from Dr. Larson. See, id. at 21–23. Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,498,593 - Digital Global Systems, Inc. v. Deepsig Inc.Institution deniedPTAB · Mar 27, 2025 · IPR2025-00049 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not 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.” 35 U.S.C. § 314(a). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with . . . radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“B. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 9–10. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“On this record, we agree with Patent Owner. Claim 1 recites “generating a pre-distorted radio signal by processing the transmit radio signal using a nonlinear pre-distortion machine learning model.” Ex. 1001, 14:19–24. This portion of claim 1 requires processing a transmit signal using a machine learning model. Id. Claim 1 also recites “updating the model parameters based on a distance metric computed between the transmit radio signal and a received signal that is obtained from the one or more radio receivers.” Id. at 14:30–35. This portion of claim 1 requires updating model parameters based on a distance metric computed using a received signal obtained from a receiver. Id. Thus, together, these portions of claim 1 require updating parameters for a transmit model based on a distance metric computed using a signal obtained from a receiver.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 10,581,469 - PTAB · Mar 26, 2025 · IPR2024-01345 · APJ Andrew L Nalven · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds after finding a reasonable likelihood that claims 1, 2, 4–6, 8–10, and 12 are obvious over Lee and claims 3, 7, and 11 over …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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 provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’968 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“We agree that the lack of the word “means” recited in claims 1 and 9 creates a rebuttable presumption that § 112(6) does not apply. Williamson, 792 F.3d at 1348. “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112[(6)] will apply if the challenger demonstrates that the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that, although not employing the word ‘means,’ the claim limitation uses a similar ‘nonce word that can operate as a substitute for ‘means’ in the context of § 112 [(f)].’” MTD Products, Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019) (quoting Williamson, 792 F.3d at 1350). Patent Owner argues that “[a] general-purpose computer, i.e., a ‘controller,’ fails to recite sufficiently definite structure for performing the DSC’s claimed function.” PO Sur-Reply 3–4. Petitioner responds that the term “controller” has previously been found to not invoke § 112(6) because it is understood as having a definite meaning of structure. Pet. Reply 1–2 (citations omitted). Petitioner is correct that the Board and district courts have in some cases found a “controller” to recite sufficient structure. On this preliminary record, we are not persuaded that the evidence is sufficient to establish that the term “designation software controller” fails to recite sufficiently definite structure and overcome the presumption that § 112(6) does not apply. At this juncture, neither party has provided sufficient evidence as to how the claimed “designation software controller” would reasonably be understood by persons of ordinary skill in the art. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). In addition, regardless of whether “designation software controller” alone connotes structure, the claim language that follows the term “designation software controller” appears to provide structure. Specifically, the claim language appears to include a step-by-step procedure, namely 1) keep the information in memory in response to a termination of viewing; and 2) designate the succeeding part of the digital moving image contents when the viewing starts again. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (“Even described ‘in prose,’ an algorithm is still ‘a step-by-step procedure for accomplishing a given result.’”); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (“where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format”). Accordingly, for purposes of this decision, we do not construe the claimed “designation software controller” as a means-plus-function limitation. No further construction of this term is necessary for purposes of this decision. During trial, the parties may provide further briefing on this issue.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with television and digital display systems, distributed multimedia communications, and networked computer systems.” Pet. 3–4 (citing Ex. 1002 ¶ 48). Patent Owner does not challenge Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the specification and asserted prior art.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“viii. Conclusion as to Claim 1 Based on the current record, we are persuaded by Petitioner’s showing for limitations 1[a] through 1[e]. Accordingly, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over Lee.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,948,968 - PTAB · Mar 24, 2025 · IPR2024-01420 · APJ Frances L Ippolito · IPR · Institution
Instituted IPR of claims 1–19 on all presented grounds after finding a reasonable likelihood that at least one claim is unpatentable, and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–19 of the ’402 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’402 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner filed a Sotera stipulation. Paper 11. Petitioner’s Sotera stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution, Paper 24 at 12). Accordingly, this factor weighs against discretionary denial.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’402 patent “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent technical training. Additionally, they would have at least three years of experience in designing or programming internet-related processes, such as user profile management and/or web-based targeted advertising.” Pet. 5 (citing Ex. 1003 ¶¶ 53–55). For purposes of the Preliminary Response, “Patent Owner applies Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’).” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner: “Because the prior art asserted herein discloses the preferred embodiment within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims as part of these proceedings.” Pet. 9 (citing Ex. 1003, ¶ 57). Patent Owner responds that, at the preliminary stage of this proceeding, “no term needs explicit construction to resolve any controversy between the parties.” Prelim. Resp. 9. We do not need to construe any terms expressly to reach our decision on institution. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,562,402
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.