- PTAB · Apr 21, 2025 · IPR2024-01506 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted challenges, finding a reasonable likelihood that Kivioja anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics” or “AB”). Under the first prong of that framework, we must determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we turn to the second prong which focuses on whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8. a. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” In evaluating whether the same or substantially the same prior art or arguments were previously presented to the Office, the Board has identified several non-exclusive factors for consideration. Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (precedential § III.C.5, first para.) (“the Becton Dickinson factors”). Specifically, we must weigh the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments. Becton Dickinson, at 17–18. Thus, the Becton Dickinson factors are framed as comparing the art or arguments in a petition against what was before an examiner during prosecution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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)). Although Petitioner provides us with constructions for “appended,” “identifier site” and “indexing site,” the meaning of these terms are not in controversy at this stage of the proceeding and their constructions will not aid in our analysis. We acknowledge, the ’241 patent. See Ex. 1005, 4:37–40, 4:45, 4:51–53.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“2. “identifying sequence reads with identical identifier and target sequences as duplicates” The parties do not request construction of the limitation, “identifying sequence reads with identical identifier and target sequences as duplicates.” Nonetheless, we invite the parties to address the construction of this limitation after institution. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). Specifically, the parties may wish to address whether the “same identifier and nucleic acid fragment” means that the sequences actually are identical. The ’241 patent states: “A duplicate sequencing read can be a sequencing read with the same identifier site and target sequence as another sequencing read in the population of sequencing reads.” Ex. 1003, 4:10–13. Yet, the claim does not use the exact wording used in the Specification.4 The ’241 patent goes on to disclose “apparent duplicates” and “true” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We do not see a material difference in the parties’ proposed levels of education and work experience. Indeed, although Petitioner asserts that a POSA “would have a PhD or equivalent training,” it allows more work experience to compensate for less education. Pet. 20 (stating that a POSA could have “commensurately less education and more work experience”). We, nevertheless, adopt Patent Owner’s proposal in this aspect because it specifies the years of experience needed. Patent Owner further disputes Petitioner’s proposal that a POSA would have had experience with “implementing and designing library preparation methods for Illumina, the leading NGS platforms in 2013.” Prelim. Resp. 7–8 (quoting Pet. 20, emphasis added by Patent Owner removed). According to Patent Owner, “[t]his level of skill inappropriately requires the POSA to be an inventor of library preparation methods.” Id. at 8. We agree with Patent Owner that “experience with implementing and designing library preparation methods for Illumina” is above ordinary skill. have had experience with DNA sequencing methods and a working knowledge of how these sequencing methods functioned.” Id. As Patent Owner recognizes, the challenged claims relate to obtaining amplicons with an amplified nucleic acid fragment and an appended adaptor and then sequencing the amplicon to generate sequence reads. See Ex. 1005, 25:33– 43. Accordingly, for purposes of this Decision, we find a person of ordinary skill in the art at the critical time would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a person of ordinary skill in the art would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. The person of ordinary skill in the art would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a person of ordinary skill in the art is consistent with the skill level reflected in the disclosures of the ’241 patent and prior art. We further note that neither aspect of the dispute over the skill level affects our decision to institute review.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,725,241 - PTAB · Apr 10, 2025 · IPR2024-01431 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 2–6, 28, and 33–37 based on all petition grounds, finding a reasonable likelihood that Haddad138 renders claims 2–6 and 33–37 obvious and Yap anticipates or renders claim 28 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). Here, due to Petitioner’s stipulation, the record does not 9 To the extent Patent Owner’s argument emphasizes that the parties have completed substantial work regarding references asserted in the petition here (PO Fintiv Surreply 1–3), this argument addresses to Fintiv factor three rather than factor four. support that the Petition’s invalidity grounds have been or will be presented to the ITC for consideration on the merits. The record also does not support that the ITC will ever adjudicate the invalidity grounds raised here10 and does not support that the ITC will ever address the dependent claims at issue here. This is, therefore, not a situation where the ITC Investigation will “resolve key issues in the petition.” Fintiv at 13. Thus, this factor weighs against discretionary denial. 7. Fintiv Factor Five: Overlapping Parties Petitioner is the same party as the respondent in the ITC investigation,” slip op. at 15
- 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 “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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose 1 Petitioner calls “IPR2024-01431 (‘Petition B’).” See Paper 3 (PETITIONER’S EXPLANATION OF PARALLEL PETITIONS CHALLENGING U.S. PATENT NO. 11,069,737), 1. of determining whether Petitioner meets the threshold for instituting review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be forfeited. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 2–6, 28, and 33–37 of the ’737 patent based upon Petitioner’s asserted challenges to patentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Patent Owner argues11 that Petitioner “offers no motivation to modify Haddad138.” Prelim. Resp. 7–8. Patent Owner specifically argues that 11 Patent Owner also argues that Petitioner does not establish that Haddad138 anticipates claim 2. Prelim. Resp. 5–7. We do not address the anticipation challenge at this time. “Petitioner does not offer any showing on any motivation to modify Figure 9 of Haddad138 to change the configuration from a FSI to BSI architecture.” Id. at 8. On this record, Patent Owner’s argument does not undermine Petitioner’s persuasive showing. As Petitioner argues (Pet. 29), Haddad138 teaches that its “present disclosure” (which would include the Figure 9 disclosure) can be adapted for a front side illumination (FSI) or back side illumination (BSI) configuration. Ex. 1012 ¶ 48. The express teaching of Haddad138 provides motivation to modify Figure 9 of Haddad138. Patent Owner also argues that Petitioner “offers no showing that a POSITA would be able to modify the embodiment of Figure 9 to be back side illuminated with a reasonable expectation of success.” Prelim. Resp. 9. Patent Owner’s argument again does not undermine Petitioner’s persuasive showing. Petitioner cites Haddad138 expressly teaching a FSI or BSI configuration. Pet. 29 (citing Ex. 1012 ¶ 48). Haddad138’s teaching is sufficient, on this record, to establish a reasonable likelihood of Petitioner establishing a reasonable expectation of success at trial. Conclusion as to claim 2” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had a Bachelor’s degree in engineering, physics, or a related or equivalent field, and two or more years of experience researching, developing, designing, and/or evaluating image sensors using photonics. Ex-1004 ¶50. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Ex-1004 ¶50. Pet. 9. Patent Owner does not dispute the level of ordinary skill in the art at this time. 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 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,069,737 - PTAB · Apr 8, 2025 · IPR2024-01401 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–23 on all asserted obviousness grounds, finding a reasonable likelihood of prevailing based on Burchia and Metabowerke for claims 9 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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 evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Therefore, “if the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Id. The Fintiv panel stated that “the degree of overlap is highly fact dependent” and encouraged the parties to “indicate whether all or some of the claims challenged in the petition are also at issue in district court.” Id. at 13. For the reasons below, we view this factor overall as weighing strongly against denial.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the Examiner erred in the evaluation of the prior art, for example, by showing that the Examiner misapprehended or overlooked specific teachings in the relevant prior art such that the error by the Office was material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 21. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8–9 n.9.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposals as to the level of ordinary skill in the art overlap in certain aspects. For example, the first option presented by Petitioner (requiring a bachelor’s degree) largely aligns with the first sentence in Patent Owner’s proposal above (also requiring a bachelor’s degree). Compare Pet. 8, with Prelim. Resp. 4. The second and final sentence from Patent Owner provides other options but is imprecise as to how much “more” or “less” of either formal education or experience are sufficient. See Prelim. Resp. 4. At this stage of the proceeding, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill in the art leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. With that, and the lack of declaration testimony supporting Patent Owner’s proposal, we adopt, for purposes of this Decision, Petitioner’s proposal as to the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,794,952 - PTAB · Apr 8, 2025 · IPR2024-01400 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–11 on all asserted obviousness grounds, finding a reasonable likelihood of success based on Burchia and Metabowerke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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 evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“patentability disputes between the parties, regardless of the stay.” Fintiv, Paper 11 at 9. We address that issue in the discussion of the fourth Fintiv factor below. Given the framing in Fintiv of this situation, the weight of the lack of a stay of the ITC Litigation depends, at least in part, on the fourth Fintiv factor. See POSCO, Paper 11 at 13; Fintiv, Paper 11 at 9. Thus, we determine that the first Fintiv factor, by itself, is neutral or bears little weight in the analysis, but it elevates the importance of the fourth Fintiv factor.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision, we find that it sufficiently implicates the concerns addressed by § 325(d) to find the first part of the framework in Advanced Bionics satisfied. We turn now to the second part of the framework: “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8–9.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposals as to the level of ordinary skill in the art overlap in certain aspects. For example, the first option presented by Petitioner (requiring a bachelor’s degree) largely aligns with the first sentence in Patent Owner’s proposal above (also requiring a bachelor’s degree). Compare Pet. 8, with Prelim. Resp. 4. The second and final sentence from Patent Owner provides other options but is imprecise as to how much “more” or “less” of either formal education or experience are sufficient. See Prelim. Resp. 4. At this stage of the proceeding, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill in the art leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. With that, and the lack of declaration testimony supporting Patent Owner’s proposal, we adopt, for purposes of this Decision, Petitioner’s proposal as to the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,365,026 - Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.InstitutedPTAB · Apr 8, 2025 · IPR2024-01439 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR of claims 1–11 and 13–21 on all asserted grounds, finding a reasonable likelihood of prevailing on claim 1 over Uchida and Grimshaw.
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 “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 and the evidence of record, and in the absence of any argument or evidence to the contrary, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’951 patent. Accordingly, we institute an inter partes review of claims 1–11 and 13–21 of the ’951 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree that the references relied upon in the Petition are cumulative of the Banerjee and Epstein references previously considered by the Office. For example, during reexamination Patent Owner represented to the Office that neither Banerjee nor Epstein discloses or suggests “an actuator on the peripheral device, wherein said actuator is arranged in a way to enable the user to carry out a user action by actuating the actuator to trigger the processing device to transfer said user selected arbitrary media content to said wireless transmitter through said port to transmit said user selected arbitrary media content to the display node via the communications network” . . . . [T]he skilled person would have appreciated that Banerjee is directed to the plug-and-play device having code that is automatically executed when the plug-and-play device is connected to the remote computer and the remote computer sending a request to share the screen by the master computer, whereas Epstein is directed to a puck that sends an intention to the switching device or wirelessly through the laptop. Ex. 2001, 124–125 (emphasis added). Here, however, Petitioner relies primarily on the structures and operations disclosed by Ono, Ichieda, and Uchida to demonstrate it would have been known to include an actuator on a wireless peripheral device to trigger the transfer of a user selected arbitrary media content. See Pet. 31–33, 57–59, 77. Importantly, unlike Epstein or Banerjee, each of those references discloses display systems that include wireless peripheral devices that have actuators that are at least related to facilitating the transfer of image data from a personal computer to a projector for display. See id. As such, we find that Ono, Ichieda, and Uchida present information that is neither substantively similar nor cumulative of that disclosed or suggested by Banerjee and Epstein. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art would have had at least a Master’s Degree in Electrical Engineering with . . . five years of work experience in computer science and embedded systems, or Master’s Degree in Computer Science with . . . five years of work experience in electrical and computer engineering and embedded systems. Additional educational experience could substitute for some of the work experience. Pet. 10 (citing Ex. 1002 ¶¶ 36–37). For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’951 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- BurdenInstituted
“Patent Owner’s assertion fails to undermine Petitioner’s contention because it does not actually address Petitioner’s point, which is that a skilled artisan would recognize, when a user slides switch 140 back to the ‘OFF’ position to allow image transfer to resume, that action would trigger image data transmission of user selected arbitrary media content from wireless through the wireless communications network for display. Instead, Patent Owner’s argument only addresses when a user slides switch 140 to the “ON” position to stop image transmission. On this record, we determine that Petitioner’s evidence and analysis shows sufficiently that Uchida and Grimshaw disclose this last claim element of claim 1. 4. Conclusion After considering Petitioner’s evidence and argument, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claim 1 based on the combination of Uchida and Grimshaw (Ground 2). We also note that both parties rely on substantially the same evidence and arguments to address independent claims 9, 16, and 21. See Pet. 49–59 (claim 9), 64–66 (claim 16), 67 (claim 21); Prelim. Resp. 34–47 (claims 9, 16, 21). Therefore, our determination for claim 1 applies equally to claims 9, 16, and 21.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,422,951 - SAP America, Inc. v. Cyandia, Inc.InstitutedPTAB · Apr 7, 2025 · IPR2024-01433 · APJ Jason W Melvin · IPR · Institution
The Board instituted review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 based on the PCT publication and Austin-Lane under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner’s Sotera stipulation will eliminate the overlap between this proceeding and invalidity at the district court. Unlike the other, related IPRs for which we discretionarily deny review (e.g., IPR2024-01432, -01495, & -01496), this proceeding does not involve references that fundamentally convey the same information as may be presented as system art in the Texas litigation. In light of the stipulation and nature of the asserted ground, we conclude that this ground strongly favors institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the claim language reads on Austin-Lane’s disclosure of determining “a presentation method of the notification” such as “using an instant message to the notebook computer” (Ex. 1105 ¶¶ 39, 46), in combination with teachings regarding the device to which the notification is sent and the protocol used to deliver it. We further conclude that Petitioner has provided an adequate reason that skilled artisans would have looked to Austin-Lane’s teachings and combined them with the system described in the PCT publication, as discussed. We have further reviewed the uncontested aspects of the challenge to claim 1 (Pet. 43–58) and determine that Petitioner is reasonably likely to prevail proving obviousness of claim 1. IV. CONCLUSION For the reasons discussed above, we conclude that Petitioner has shown a reasonable likelihood of prevailing with respect to unpatentability of at least one claim. Accordingly, we institute inter partes review. V. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 of the ’948 patent is instituted on the grounds raised in the Petition; and” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent, with two or more years of experience developing and implementing graphical user interfaces for controlling server-based applications, including handling asynchronous notifications generated by those applications and web services, such as portal systems, or an equivalent amount of relevant work or research experience” and “would have been familiar with common approaches for presenting information on a graphical user interface, including various layouts for presenting multiple elements, such as icons, widgets, windows, etc.” Pet. 14–15. Petitioner describes further capabilities that such a person of ordinary skill in the art would have had. Id. at 15–16. Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” Prelim. Resp. 14. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Should either party believe that the definition of ordinary skill in the art affects a disputed issue in the trial, it should point out how and identify any potential dispute about the level of skill.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We do not agree. Petitioner notes that certain disclosures added to the April 2011 CIP application describe a “notification manager” to “determine the best alert notification method.” Pet. 27 (quoting Ex. 1110 ¶ 131; citing id. ¶¶ 90–93, 130–132, 145–147, 160). That does not mean that Petitioner construes the claim language to require determining the best method, only that disclosing a mechanism that “determine[s] the best alert notification method” provides written-description support for a requirement to “determin[e] a notification method.” Petitioner is clear in its position that the May 2009 application “does not describe how to determine a notification method or how to use ‘session data’ in the manner required by this claim limitation.” Pet. 27–28. Patent Owner asserts that the May 2009 application discloses “determining a notification method” through a channel alert server that can “determine the active devices of the subscriber . . . to provide a visual or auditory alert in the channel.” Prelim. Resp. 32 (quoting Ex. 1106 ¶ 39). That disclosure appears to address the claim language requiring an alert “based on the current state of the at least one external device indicated by the session data.” It does not, however, address the claim language “determining a notification method.” Patent Owner recognizes that Petitioner asserts disclosures in the prior art for “determining which devices to send the alert to, the protocols used to send the alert, and how alerts are presented.” Id. at 34 (emphasis omitted). But when Patent Owner asserts that the May 2009 application discloses determining how alerts are presented, it points to paragraphs that do not support the assertion. Id. at 35 (citing Ex. 1106 ¶¶ 23, 39). The first, paragraph 23, states that a “trigger may cause the information channel to change its appearance or to take other actions that may be implemented by the developer” and that “one action that may be implemented is to provide a notification to the user.” Ex. 1106 ¶ 23. Nothing about that indicates the system determines how an alert is presented. The second, paragraph 39, states that the channel alert server may “provide a visual or auditory alert in the channel” and that the “alert can appear as defined on other platforms.” Nothing about that indicates the system determines how an alert is presented. Patent Owner has not shown how the May 2009 application discloses a determining a notification method, as claimed. In Patent Owner’s view, Petitioner admits that the May 2009 application (which is the same as the asserted PCT publication) describes determining a delivery mechanism because Petitioner compares it to Austin-Lane, stating that the PCT publication “already includes a channel alert server that determines the active devices of the user and delivers an alert to the user’s device” and “discloses setting the same type of alert (stock alert) and presenting it in the same way (visually) as Austin-Lane.” Prelim. Resp. 35 (quoting Pet. 54) (emphasis omitted). But simply delivering an alert does not necessarily mean the notification method for that alert was determined. We conclude that Petitioner’s statement does not show the PCT publication discloses “determining a notification method” as claimed.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,751,948 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01402 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Okashita.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). Patent Owner argues that we should reject any “late” Sotera stipulation. Prelim. Resp. 47–48. The only authority cited for this argument are Board decisions concerning stipulations filed after a Decision on Institution was entered. Id. As Petitioner’s stipulation was filed prior to this Decision being entered, it is not “late” under the authority Patent Owner cites, and, thus, on this record, we decline to reject Petitioner’s stipulation. See NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) (precedential) (holding that the only appropriate time for a petitioner to offer a stipulation is prior to the Board’s decision on institution) cited in CAPJ Memo, 2 n.1. In Sotera Wireless, the Board found that a stipulation such as the one proffered here by Petitioner addressed “concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, IPR2020-01019, Paper 12 at 19. For these reasons, we find that this factor weighs “strongly in favor of not exercising discretion to deny institution.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’886 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We begin our analysis by pointing out that neither party offers a claim construction of “cascaded transistors,” though both parties reference the understanding of the term set forth by Petitioner’s declarant. Although we do not reject Petitioner’s declarant’s definition, we also do not adopt it as the meaning of “cascaded transistors” at this time, absent the parties’ proposal that we do. According to the ’886 patent, transistors simply “coupled in series” are “cascaded.” Ex. 1001, 6:50–51. We use this disclosure to guide our analysis. Reviewing Figure 7 of Okashita, we see a configuration of transistors 1 and 2 that appears, on this record, to be coupled in series. When transistor 2 acts as a shunt for transistor 1, i.e., when the threshold voltage of transistor 2 has been overcome, then current flows through transistor 1, through transistor 2, and then to ground. Ex. 1004, 7:15–17. At this preliminary stage, this is a sufficient showing that Okashita’s transistors are “cascaded” as contemplated by the ’886 patent.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“intervening silicon layer between the source/drain junctions and the buried silicon oxide layer. Pet. 60. Petitioner asserts that a person of ordinary skill in the art would have had a reason to take advantage of Okashita’s design: (1) to “reduce the operating temperature of the transistors,” which will “enhance their performance and reliability,” (2) to “prevent leakage of radio frequency signals,” and (3) to “minimize the effect of mismatch.” Id. at 60– 63. Patent Owner’s first argument is that a person of ordinary skill in the art would not look to Okashita because Okashita “is entirely focused on keeping AC and DC grounds separate,” something Patent Owner argues “is not present in Burgener.” Prelim. Resp. 37. It is not clear to us on this record that Patent Owner is correct that keeping AC and DC grounds separate is not present in Burgener, given that Burgener has both AC signals coming in from ports A–D, as well as digital control signals coming in from the control ports (e.g., 1708 and 1718, for port A). See Ex. 1006 ¶¶ 100–101 (discussing RF ports and control signals). In any event, even if the particular problem solved by Okashita is not one of the problems articulated in Burgener, that does not mean that the teachings of Okashita cannot be applied to Burgener. KSR, 550 U.S. at 420 (“any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed”). Petitioner has asserted three reasons, mentioned above, why a person of ordinary skill in the art would look to improve Burgener with Okashita’s teachings, and Patent Owner does not appear to contest them at this time.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - PTAB · Apr 1, 2025 · IPR2024-01396 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–19 under all petition grounds, finding a reasonable likelihood of success on obviousness; the majority declined Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“independent claims’ features. The vast majority of Petitioner’s assertions are uncontested at this stage. Further, Petitioner’s evidence shows that Bennett discloses “a first network stack Application Programming Interface (API), containing at least one first call accessible to each of a plurality of device applications, the first network stack API callable by each of the plurality of device applications to open and use data packet flows via the network stack, the wireless modem, and the at least one wireless network,” which is the only limitation that Patent Owner disputes at this stage of the proceeding. See infra, Section III.2. For the sole feature missing from Bennett—i.e., application-based data usage monitoring—Petitioner presents clear and uncontested evidence, backed by multiple prior art references, that the technique and its benefits were well known, as outlined below. Petitioner also articulates, with clear support from its expert and the prior art, not just one but several reasons that would have motivated a skilled artisan to combine Vadde’s application-based data monitoring technique in Bennett. For these reasons, we determine that the merits of at least one ground raised in the Petition are particularly strong. Thus, this factor weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness analysis. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and we are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenges to the challenged claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communication network applications and software.” Pet. 2. Further, “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 8. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’918 patent.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“modem, network stack, and Application Programming Interfaces. Pet. 19– 29. Petitioner further relies on Bennett for its disclosure of routing network data via a first network stack application programming interface (“API”) or a second API call to a proxy media service manager that interfaces with the network stack. See id. at 29–43. Petitioner adds Vadde for teaching managing data traffic for applications using a policy-based system that enforces restrictions based on an application’s data usage. Id. at 44–57. With support from its expert Dr. Traynor and a number of prior art references, Petitioner explains that “the benefits of data usage monitoring were well-known prior to the ’918 Patent and would have been part of a POSITA’s general knowledge.” Id. at 15 (citing Exs. 1003, 1044, 1045, 1062, 1063). Petitioner articulates a number of those benefits including, for example, to facilitate identifying and restricting data-intensive applications to reduce battery usage and to facilitate greater control over data-intensive application activities that risk degrading networks high costs for users. Id. at 15–17 (citing Exs. 1003, 1041, 1042, 1046). In addition, Petitioner explains that adding per-application data usage monitoring to Bennett’s device “would have enabled device manufacturers and service providers to incorporate additional applications and functionality into wireless devices while allowing users to retain control of aggregate device data usage.” Id. at 17 (citing Exs. 1003, 1042). Petitioner adds three references, Riggs, Hendrickson and Srikantan, for their disclosures of various dependent claim features including log generators/reports, storing data associated with played media content, and a network resource indicator that identifies the media object. Pet. 58–95.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,647,918 - PTAB · Mar 27, 2025 · IPR2024-01451 · APJ Erica A Franklin · IPR · Institution
The Board instituted review of claims 1–19 on all petition grounds, finding a reasonable likelihood that claim 1 would have been obvious over Larson alone.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“of whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). Rather, when considering the Fintiv factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, factors one and six are neutral, factors two and three weigh against discretionary denial, and factors four and five favor denial. We assign less weight to the existence of an overlap in asserted claims and prior art, in view of there being no trial date scheduled in the District Court case and no persuasive evidence that the court’s trial date would be expected to be significantly before the due date of our Final Written Decision. Therefore, after weighing all of the factors, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the person of ordinary skill in the art. Prelim. Resp. 27. In view of this, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition for purposes of this Decision. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Therefore, we do not apply this aspect of Petitioner’s formulation.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that there is no need to expressly construe any claim term to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 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))). To the extent that any discussion regarding the scope of a claim term is relevant to our decision, we address that issue in our analysis of the asserted grounds of unpatentability.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Owner that Petitioner has not demonstrated sufficiently in the Petition, for purposes of institution, that all of the portions of Saxonov relied upon in the Petition are prior art. In particular, we determine that Petitioner has not established that the disputed portions of Saxonov are entitled to claim the benefit of the ’013 provisional filing date because Petitioner has failed to satisfy the second condition for this benefit, i.e., by showing that the provisional application provides sufficient support for certain subject matter in Saxonov relied upon for prior art purposes in the Petition.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,827,921 - 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.