- PTAB · Mar 7, 2025 · IPR2024-01336 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–4, 6–10, 13–14, 17, and 21–25 on all petitioned grounds, finding a reasonable likelihood of unpatentability and no basis for General Plastic denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“we determine that discretionary denial is not appropriate in the circumstances of this case. With respect to General Plastic factor 1, we agree with Patent Owner that Cisco is a customer of Petitioner and was identified by Petitioner as a real party in interest, and therefore has a “significant relationship” with Petitioner under Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential) (“Valve”). However, we are mindful of the Director’s finding in Code200 that “General Plastic factor 1 must be read in conjunction with factors 2 and 3,” and that “[w]here the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1–3 only weigh in favor of discretionary denial when there are ‘roadmapping’ concerns under factor 3 or other concerns under factor 2.” Code200 at 5.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b) (2020). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 4 (citing Ex. 1003 ¶¶ 50–51). Petitioner further states that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not offer a proposed level of ordinary skill at this stage of the proceeding. See Prelim. Resp. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’802 patent and the asserted prior art of record.” slip op. at 19
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“III. MOTION FOR JOINDER As noted above, Petitioner also filed a Motion for Joinder to the Samsung IPR. Paper 3. Because the Samsung IPR has been terminated, we find that the Motion for Joinder is moot, and dismiss it accordingly.” slip op. at 20
Discretionary denialcites KSR · GrahamPatents in suitUS 7,924,802 - Duration Media LLC v. Rich Media Club LLCAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Remand
On remand, the Board held claims 1–10 unpatentable as obvious over Krassner, Badros, and Harkins; it did not reach the alternative Badros and Harkins ground.
RulingsRemand decision- RemandOther
“On August 16, 2024, Petitioner filed a Request for Director Review of the Final Written Decision. Paper 73 (“Req.”). Patent Owner opposed the Request. Paper 77. On December 12, 2024, Director Vidal granted the Request and entered a Director Decision. Paper 78 (“Director Dec.”). The Director Decision states that “Petitioner persuasively shows that Badros discloses the viewability test.” Director Dec. 9. Accordingly, the Director Decision vacated the Previous FWD, and remanded back to us for further proceedings. Id. at 13. We have jurisdiction under 35 U.S.C. § 6 and pursuant to the Director’s Decision. For the reasons discussed below, we determine that Petitioner has met its burden to prove, by a preponderance of the evidence, that claims 1–10 of the ’329 patent are unpatentable.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience in computer programming with at least one year of said experience being in the field of internet advertising.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artReference not prior artDecided for patent owner
“Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“subject matter [sought to be patented] pertains,’ this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is ‘too remote to be treated as prior art.’” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). “Whether a reference in the prior art is ‘analogous’ is a determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59.” slip op. at 19
Patent outcomesUS 11,443,329 unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - PTAB · Mar 4, 2025 · IPR2024-01253 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 based on a reasonable likelihood of obviousness over Eldering-I and Eldering-II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“The CTPG states that “the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation.” CTPG 59. Patent Owner does not “clearly proffer any necessary stipulations” as the CTPG stresses. See id. at 61 (“If stating that issues are not material or in dispute, the patent owner should clearly proffer any necessary stipulations. For example, the patent owner may seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.”).” slip op. at 7
- Other 314aDecided for petitioner
“The Director has broad authority to exercise discretion to deny a petition under § 314. However, Patent Owner does not assert that Petitioner is a real party in interest with United Patents or allege that Petitioner is in a special relationship with Unified Patents based on its membership status, with respect to the EPR. See Paper 11, 5; Ex. 2013, 8–12 (different IPR finding no special relationship between Hulu and Unified Patents); Fintiv, Paper 11 at 13–14 (“If a petitioner is unrelated to a defendant in an earlier court proceeding, the Board has weighed this fact against exercising discretion to deny institution under NHK.”). In addition, the EPR involves only independent claims 1, 10, 19, and 27 and a different combination of prior art. See Ex. 2009, 1, 6 (relying on Wu, Rosenberg, and Angel, or Wu Rosenberg, Eldering, and Engel). In general, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311. Accordingly, we determine that the circumstances outlined do not tilt toward exercising discretion on this record to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Mar 4, 2025 · IPR2024-01252 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 on the asserted obviousness ground over Wu and Doherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Contrary to Patent Owner’s arguments, Wu and Doherty are not cumulative to Knepper. As Petitioner argues, the Petition relies on Wu’s teachings regarding a digital recording/play back system allowing users to fast forward through or skip over advertisements during playback and Doherty’s teachings regarding rescheduling advertisements and other items of information (e.g., media content) in response to user input—neither set of teachings is present in Knepper. Reply 2.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construction for “intersplicer” as “software that selects advertising content and controls insertion and conveyance of advertising content in media content.” Pet. 5 (citing Ex. 1001, code (57), 7:45–55, 15:4–18). The specification implies that the intersplicer is “application software” that may include an “‘intersplicer’ module.” Ex. 1001, 7:45–58. The module “select[s] . . . the ads to be shown” and controls the insertion and conveyance of ads and the application software “automatically edits the selected advertisements into the presentation stream.” See Pet. 5 (quoting Ex. 1001, 7:45–55; citing Ex. 1003 ¶ 23); see also Ex. 1001, code (57) (“The intersplicer combines the media files with the ad files by providing control signals to the media player, causing the media player to present the ad files with the selected media files.”). Patent Owner does not propose a construction for “intersplicer” at this stage in this proceeding. See generally Prelim. Resp.7 The preliminary record supports Petitioner’s proposed construction of an “intersplicer” for purposes of this Institution Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - Samsung Electronics Co., Ltd. v. Wipqtus Inc.All claims unpatentablePTAB · Feb 24, 2025 · IPR2024-00023 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5, 7, and 9 are unpatentable as obvious over Chatterjee and Corbridge; the revised contingent motion to amend is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“testimony, we agree with Petitioner that Chatterjee teaches claim 22’s limitation. See Pet. 58–59; Opp. 17, 25; Ex. 1002 ¶¶ 121, 178–179; Ex. 1021 ¶¶ 68, 94; supra § III.D.4(a). Moreover, an ordinarily skilled artisan would have been motivated to combine the teachings of Chatterjee, Corbridge, and Cook in the way Petitioner proposes and would have had a reasonable expectation of success. See supra §§ III.D.3(l)(iii), IV.C.4(b)(v).c. Hence, Petitioner has shown by a preponderance of the evidence that proposed substitute claim 22 is unpatentable under § 103 because the claim would have been obvious over Chatterjee, Corbridge, and Cook. V. CONCLUSION Based on the evidence presented with the Petition, the evidence introduced during the trial, and the parties’ respective arguments, Petitioner has shown by a preponderance of the evidence that claims 1–3, 5, 7, and 9 in the ’339 patent are unpatentable under § 103 because the claims would have been obvious over Chatterjee and Corbridge.12” slip op. at 165
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony, we agree with Petitioner that Chatterjee teaches claim 22’s limitation. See Pet. 58–59; Opp. 17, 25; Ex. 1002 ¶¶ 121, 178–179; Ex. 1021 ¶¶ 68, 94; supra § III.D.4(a). Moreover, an ordinarily skilled artisan would have been motivated to combine the teachings of Chatterjee, Corbridge, and Cook in the way Petitioner proposes and would have had a reasonable expectation of success. See supra §§ III.D.3(l)(iii), IV.C.4(b)(v).c. Hence, Petitioner has shown by a preponderance of the evidence that proposed substitute claim 22 is unpatentable under § 103 because the claim would have been obvious over Chatterjee, Corbridge, and Cook.” slip op. at 165
Patent outcomesUS 10,038,339 unpatentable§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 10,038,339 - PTAB · Jan 27, 2025 · IPR2024-01158 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 1–5, 7–15, 17, and 18 on all petitioned grounds, finding a reasonable likelihood of success on the Tateishi anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’377 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’377 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Thus, Patent Owner implicitly proposes a narrow construction of “control signal.” However, Patent Owner, at this stage, does not explain adequately why that is the proper construction. The claim language is “control signal,” and that term does not contain the “logical” modifier urged by Patent Owner. See Ex. 1001, 9:44–45, 10:8–9.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,041,377 - Netflix, Inc. v. VL Collective IP LLCAll claims unpatentablePTAB · Jan 7, 2025 · IPR2023-00891 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–22 are unpatentable, including as anticipated by Comps; the majority finds Comps’s Tracks 1 and 3 example meets the claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and supported by the testimony of Dr. Bederson. See Ex. 1003 ¶¶ 28–30. Dr. Goodrich testifies that “Dr. Bederson and Petitioner offer a slightly different definition of the POSITA, which is similar to my definition” and that his “opinions would not change were” he “to adopt the definition of POSITA offered by Petitioner.” Ex. 2011 ¶ 54. Accordingly, we adopt Petitioner’s proposal, which is materially the same as Patent Owner’s proposal for purposes of this Final Written Decision, as Dr. Goodrich testifies. 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“1. content-related data segments Claim 1 recites “content-related . . . data segments.” Patent Owner construes this phrase as “segments of content data that have a syntactical meaning within the respective data file.” PO Resp. 12. As Patent Owner notes, the ’794 patent specification states that “[t]he term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Id. at 12–13 (quoting Ex. 1001, 4:9–22); Ex. 1001, 4:9–22 (second emphasis added). The ’794 specification supports Patent Owner’s position that the emphasized sentence essentially defines the term “content-related . . . data segments.” PO Resp. 13–15. However, as Petitioner argues, nothing in the sentence restricts “content-related data segments” to “content” only, for example, “sampled audio,” instead of also including information relating to the content. See Reply 3 (arguing that “the phrase ‘content data’ appears nowhere in the ’794 patent and was not part of the ‘inventors’ express lexicography’ for ‘content-related . . . data segments,’ as P[atent] O[wner] incorrectly contends”). Petitioner points out that Patent Owner’s reliance on the specification refers to “content-related . . . data segments” and “contentbased data segments.” Id. (emphasis by Petitioner) (quoting Ex. 1001, 4:9– 22). Petitioner also contends that the specification refers to describing data, contradicting Patent Owner’s position that the data segments must include content. Id. at 7 (“[A]ccording to at least one embodiment of the invention, media data, in particular video or audio data, and/or metadata, in particular encoded according to the XML standard, are described by way of the first and/or second data file.”) (emphasis by Petitioner) (quoting Ex. 1001, 3:4– 10). Moreover, as Petitioner argues, “the word ‘data’ should be given its plain and ordinary meaning,” so that “even if the [unrecited] phrase ‘content data’ is included in the Board’s construction . . . . the term ‘content data’ would include any information relating to the content.” Id. at 4. As noted above, both parties point to the specification’s definition of “content-related . . . data segments”: “The term ‘content-related’ is understood to mean that first and second data segments have a syntactical meaning within the respective data file, such as e.g. a plurality of succeeding second data segments represent the speech signal of a specific speaker within a dialog sequence.” Ex. 1001, 4:9–22. This passage indicates that data segments are content-related or include content, such as a “speech signal,” and that these segments “have a syntactical meaning” with respect to the source of the signal, such as a speaker. See Inst. Dec. 9 & n.8, 17 (observing that “[t]he term ‘content-related’ is somewhat subjective because there is not much guidance in the ’794 patent specification as to what a ‘syntactical meaning’ encompasses”). In context, one plain meaning of the term “syntax” is “[t]he way in which words are put together to form phrases and sentences.” Ex. 3002 (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 1305 (1976)). However, as indicated above, the ’794 patent refers to video images and audio sounds with a syntactical meaning, showing that it embraces broader subject matter than the plain meaning of “syntax.” Patent Owner’s argument that the ’794 patent refers to “content-” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“segments.’”). Comps supports Petitioner and states that “two syllables represented by the fields TEXT[1] and TEXT[2] must be presented to the user.” Ex. 1004, 3:39–40 (emphasis added). Accordingly, Petitioner persuasively maps each of these text fields to an “associated one of the content-related first data segments [Nf3 and Nf4, respectively] on the basis of an assignment rule [the SYNCH process],” as claim 1 requires.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“1. Claim 6 Petitioner identifies particular passages in Comps and Wan as teaching or suggesting the subject matter additionally recited in claim 6 and provides reasons for combining the teachings. Pet. 50–51. The record supports Petitioner’s showing. See id. Patent Owner does not provide separate arguments for claim 6. See generally PO Resp. Based on the full record, we determine that Petitioner shows by a preponderance of evidence that Comps and Wan render claim 6 unpatentable. 2. Claims 7, 8, and 22 Claim 7 recites “[t]he method as claimed in claim 1, further” slip op. at 68
Patent outcomesUS 8,605,794 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Dec 10, 2024 · IPR2024-00983 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–6, 10, 17, 19, and 20 for all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner has stated that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00983 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00983 for any claim of the patent.” Ex. 1017 (citing Sotera, IPR2020-01019, Paper 12). Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–6, 10, 17, 19, and 20 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We agree with the court and the parties in the Apple Litigation “that ‘control component’ is a nonce phrase tantamount to using the word ‘means.’” Ex. 2002, 19 (citing Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022)). We also agree that the ’882 specification links the stated function of the control component requirement with the direct sensing of position and velocity algorithm depicted in Figure 45, discussed above in Section II.C. Ex. 1013, 17; Ex. 2001, 10; Ex. 2002, 40.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,152,882 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 9, 2024 · IPR2024-01026 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 5–8 and 16–19 on all petition grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’304 patent. Accordingly, we institute an inter partes review of claims 5–8 and 16–19 of the ’304 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 5[a] receiving, at a second conditional access client of the second conditional access server, an authentication through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses the second root of trust for the second security domain which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’304 patent.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,667,304
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.