- Comcast Cable Communications, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Apr 29, 2025 · IPR2025-00181 · APJ Scott B Howard · IPR · Institution
The Board denied institution on claims 1–20, exercising § 314(a) discretion because Petitioner’s second parallel petition was unnecessary.
RulingsInstitution decision- Parallel petitionsDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here.” slip op. at 7
Discretionary denialPatents in suitUS 11,785,275 - PTAB · Apr 29, 2025 · IPR2025-00180 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Comcast would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. Petitioner has complied with our guidance by filing a statement ranking the petitions. See Practice Guide, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2025-00181 and IPR2025- meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts. warranted. Given our Decisions to Deny Institution in IPR2025-00181 and IPR2025-00182 and the official guidance we have received in the Practice Guide, we have no option but to deny Patent Owner’s request that we exercise our discretion to deny institution on all three of the petitions challenging the ’275 patent. Accordingly, we do not exercise our discretion to the deny institution in the instant proceeding. E. Anticipation of Claim 1 by Zhang” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’275 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7 7 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that all of the limitations “should be given their ordinary and customary meaning to a” person having ordinary skill in the art. Pet. 19. Although Petitioner argues that none of the limitations are means-plus-function terms, Petitioner provides constructions to the extent that there are means-plus-function terms. Pet. 19–20. Patent Owner does not respond. See Prelim. Resp. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 8 If either party intends to argue a claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“Practice Guide”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ construe 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))). D. Parallel Petitions” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,785,275 - PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision
Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26
Patent outcomesUS 9,427,662 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over Hays; the Board also found claims 8 and 16 obvious over Hays and Choi.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). skilled artisan “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems,” but notes that a skilled artisan “may have additional education that might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” PO Resp. 2 (citing Ex. 2004 ¶ 28). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. PO Resp. 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” PO Resp. 3. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’056 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language itself suggests no such restrictions. Rather, all the claim language recites is video-game content that is for use in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Hays discloses that an advertiser can target particular ads at particular times, such as “air[ing] the Domino’s ad campaign” after a “game has been played for 45 minutes.” Ex. 1005 ¶ 22. Thus, an advertiser selects ads to run, and those ads become part of the pool from which the advertising matching and weighting system selects ads. See Ex. 1005 ¶ 22 (“Based on information associated with each of the available ad units (e.g., current game environment, game title genre, predicted player demographic information for current available ad unit, player geography, time of day, etc.), the advertisement server may then (through matching and optimization) distribute and deliver targeted advertisements to players’ gaming devices, where the advertisements may be integrated into the relevant game areas in real time.” (emphasis added)). Thus, we agree with Petitioner that the ad targeting described in Hays’s paragraph 22 happens before the matching and weighting system determines which ads to serve. Pet. Reply 3–4 (referring to Hays’s paragraph 22 and arguing that the “pre-selection plainly happens serve to a particular mobile device”). In other words, ads are pre-selected before they are ultimately selected by the matching and weighting system. Petitioner’s contentions and Hays’s disclosures are consistent with the ’056 patent’s written description, which states the following: The pre-selected content may be stored on a storage medium accessible by the server. Updated content may be chosen from pre-selected content based on at least one of the factors including a type of the mobile communication device, a telecommunication service, a subscription associated with the mobile communication device, and a service provider of the telecommunication service. Ex. 1001, 11:34–40. Thus, the ’056 patent discloses that content is selected from pre-selected content. Claim 9 similarly requires identifying “what preselected in-game video game content to send,” meaning that content is selected from pre-selected content. See Tr. 31:2–5 (Patent Owner’s counsel’s argument that “there must be a pre-selection of certain content that will be available from which to select once the request is received, and then the checking step is performed in the various claims here”), 31:21–23 (Patent Owner’s counsel’s argument that “[t]here must be some pre-selection of, you know, kind of narrowed down content, if you will, but then when the request comes in, you choose among that pre-selected content for the final selection”). On this record, we find that Petitioner’s contentions and Hays’s disclosure of selecting ads to serve from a pool of ads that are selected ahead of time are consistent with the written description of the ’056 patent and show how Hays teaches the pertinent claim limitations.” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“argues that Hays “is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’056 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” PO Resp. 56–58. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–16 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays, which is a prior art printed publication.” slip op. at 17
Patent outcomesUS 11,117,056 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,117,056 - PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00171 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–14 are unpatentable as obvious over Hays; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of Dr. Zagal, argues that a person having ordinary skill in the art “would have had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 62–66). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 62–66). Patent Owner, relying on the testimony of Dr. Akl, contends that a skilled artisan “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems,” but notes that a skilled artisan “may have additional education that might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” PO Resp. 2–3 (citing Ex. 2004 ¶ 28). According to Patent Owner, Petitioner’s proposal does not require Owner states, “[t]his difference does not materially affect the analysis presented below.” PO Resp. 3. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’958 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“requirements for the language “for use in a video game,” including that the updated video-game content be an interactive object that is inserted into an existing game, or at least a new ad unit not already present in the game, and that the updated content alter the function of the game. PO Resp. 15–17. Patent Owner offers no persuasive support for these restrictions on the claim language. The claim language itself suggests no such restrictions. Rather, the claim language simply recites video-game content that is for use in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s position to be that mere storage of content is not enough to show pre-selection of that content. For example, during oral argument, Patent Owner’s counsel argued as follows: I don’t think it’s just as simple as saying, well, anytime you store anything, it’s been pre-selected, because again, that kind of reads out pre-selection, as well. And the same thing with indexing. I think that’s simply too broad. There must be some pre-selection of, you know, kind of narrowed down content, if you will, but then when the request comes in, you choose among that pre-selected content for the final selection. Tr. 31:18–23; see also PO Resp. 11 (“[E]xtending the claim to content that is merely selected from storage and sent gives no meaning to pre-selected . . . .”), 12 (“[C]ontent is not shown to be pre-selected by selecting it from storage and sending.”); Tr. 31:2–5 (Patent Owner’s counsel’s argument that “there must be a pre-selection of certain content that will be available from which to select once the request is received, and then the checking step is performed in the various claims here”), 34:23–24 (Patent Owner’s counsel’s argument that “[t]here still must be a pre-selection, which we don’t think is simply, you know, the act of storing”). As explained below in Sections II.D.2.b and II.D.6, Petitioner’s contentions based on Hays show that Hays teaches pre-selected ads, as recited in claims 1 and 8, and a pre-selected message, as recited in claims 5 and 12, according to Patent Owner’s understanding of the term. Therefore, we apply Patent Owner’s interpretation in our patentability analysis, and we need not provide a full claim interpretation, nor do we need to resolve whether pre-selecting can be met by merely storing data. See Realtime” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “Hays is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’958 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” PO Resp. 48–50. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–14 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays, which is a prior art printed publication.” slip op. at 15
Patent outcomesUS 10,617,958 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,617,958 - PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00132 · APJ David C Mckone · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over Hays; claim 6 is also unpatentable over Hays and van Datta.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’202 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language itself suggests no such restrictions. Rather, the claim language simply recites video-game content that is usable in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it. As Petitioner points out (Reply 5), the specification directly refutes Patent Owner’s position. The ’202 patent’s Figure 2A (reproduced above) is instructive. In this example, “several items 210, 220, 225, 230, and 235 are shown within scene 200,” and virtually any of these items may be changed by receiving updated content on the mobile communication device. For instance, the shirt 230 might be updated to include a logo associated with third party X (as shown). The poster 225 might advertise an upcoming movie for third party Y, and chalk board 220 may contain a handwritten advertisement for third party Z (as shown). Ex. 1001, 6:42–50. When an advertising contract changes, “the mobile communication device may thereafter download updated content reflecting a new graphic, shirt, or entirely new object, to place at 230.” Id. at 6:55–57. These are examples of updated video-game content (updated advertisements on posters, T-shirts, and chalk boards) that are usable (e.g., by the game or mobile communication device executing the game) in a video game that already exists on the mobile communication device. These are also examples of what Patent Owner argues are “skins” that correspond to existing ad units and that do not alter any function of the game. Patent Owner’s construction, then, would exclude the ’202 patent’s preferred embodiment. “Such an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). Patent Owner argues that “[e]ach of Hays and Choi is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’202 Patent.” PO Resp. 56. Patent Owner argues that a prior art reference under pre-AIA 35 U.S.C. § 102(e) is a printed publication under Section 311(b) only as of its publication date and not as of its filing date. Id. at 56–58. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–9 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays or Hays and Choi, which are prior art printed publications.” slip op. at 16
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner and Dr. Akl misunderstand Hays. In the soft drink example, “the advertisement management service system may send bots or electronic agents into the game as advertising units or real characters in the game.” Ex. 1005 ¶ 79. Thus, the service system inserts more than a skin; it inserts a bot or agent that was not part of the game before its insertion. Because Dr. Akl’s testimony (Ex. 2004 ¶¶ 63–64, 72–73) is inconsistent with Hays’s disclosure, we do not credit it. See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (“[W]e must disregard the testimony of an expert that is plainly inconsistent with the record . . . .”).” slip op. at 27
Patent outcomesUS 9,731,202 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,731,202 - 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 - Samsung Electronics Co., Ltd. v. Headwater Research LLCInstitution deniedPTAB · Apr 1, 2025 · IPR2024-01397 · APJ Garth D Baer · IPR · Institution
The Board denied institution of IPR challenging claims 1–19, exercising § 314(a) discretion because the priority dispute no longer justified two petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied
“of two petitions challenging the same claims of the ’918 patent. See Prelim. Resp. 22–25. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id.” slip op. at 5
Discretionary denialPatents in suitUS 9,647,918 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00129 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of success and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). “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.” 37 C.F.R. § 42.108(a) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00422, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00128 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of unpatentability and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). “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.” 37 C.F.R. § 42.108(a) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00421, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260
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.