- PTAB · Jul 7, 2025 · IPR2025-00221 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Kotzin, Petitioner contends that an ordinarily skilled artisan for the ’889 patent [w]ould have been someone knowledgeable and familiar with the wireless communications systems that are pertinent to the ’889 patent. That person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems. Pet. 18–19 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s contention as to the level of ordinary skill in the art. See generally, Prelim. Resp. Based on this record, and because there is no dispute, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’889 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We point out that in contrast with Patent Owner’s case law, the “indefinite article ‘a’ or ‘an’ in patent parlance usually carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather than merely as a presumption or even a convention.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). “The subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.” Id. “The exceptions to this rule are extremely limited: a patentee must evince a clear intent to limit ‘a’ or ‘an’ to ‘one.’” 01 Communique Lab’y, Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012). But for the time being, we need not decide this issue.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“D. Ground 1: Claims 1, 2, 5, and 6 – Obviousness over Dateki Petitioner contends that claims 1, 2, 5, and 6 of the ’889 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Dateki. Pet. 21–47. Patent Owner opposes. Prelim. Resp. 33–64. Having considered the arguments and evidence before us, we determine that the record establishes a reasonable likelihood that Petitioner would prevail on this asserted ground of unpatentability. In their Preliminary Response, Patent Owner has limited the dispute at the institution stage mainly towards limitations [1.2], [1.3] and [1.4] and the claimed “control message.” We, therefore, address specifically the parties’ arguments with respect to these claim limitations.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,664,889 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-01334 · APJ David C Mckone · IPR · Final written decision
Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 6:18–26. Petitioner argues that “an ATM is not a party to a transaction—the parties are the user and the bank, and the ATM is the mechanism through which the bank’s accounts are accessed.” Reply 5–6 (citing Ex. 1026 ¶ 13). Similarly, Petitioner argues, a file “is not a principal party to a transaction—rather the user and the provider of the file (e.g., a vendor) are the parties.” Id. at 6 (citing Ex. 1026 ¶ 13). Petitioner makes similar arguments for financial accounts, savings accounts, medical records, and insurance information. Id. (citing Ex. 1001, 6:18–26; Ex. 1026 ¶ 14). We agree with Petitioner. The specification, here, gives several examples where the application being accessed is not, itself, a party to the transaction, but rather an asset of one of the parties or the mechanism by which the parties transact.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term ‘access message’ to mean ‘a signal or notification enabling or announcing access.’” PO Resp. 7. However, Patent Owner argues that applying “access message” to Ludtke’s transaction confirmation “fails to account for the claim term ‘access to an application.’” Id. at 7–8. Rather, Patent Owner argues, a transaction confirmation “is a message announcing that a transaction has been completed.” Id. at 8. Patent Owner contends that “[t]he plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object wherein the object is the claimed application.” Id. (citing access, MERRIAM-WEBSTER DICTIONARY (available at https://www.merriam-webster.com/dictionary/access)). Here, Patent Owner appears to retreat on its agreement that “access message” can include a signal “announcing” access, and suggests that we limit “access message” to a signal “enabling” access. However, Patent Owner then returns to its agreement, stating that “[i]t would be improper to construe ‘access message’ as something other than a signal or notification enabling or announcing a user’s access to (ability to enter, communicate with, or make use of) an application.” Id.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for petitioner
“As explained above, a person of ordinary skill in the art would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent, while additional education could substitute for professional experience, and significant work experience could substitute for formal education. Mr. Carrothers claims to be “a financial services and retail leader with approximately thirty years of experience working in a variety of leadership roles in retail payments.” Ex. 2018 ¶ 1. He lists professional and consulting experience with retail payments, operational and risk management of a credit card portfolio, and payment insurance and acceptances in stores and online. Id. ¶¶ 1–5. His Curriculum Vitae (Ex. 2018, Appendix A) lists education including a Bachelor of Business Administration and a Master of Business has either the technical education or the technical experience to be a person of ordinary skill in the art. In response to Petitioner’s challenge to Mr. Carrothers’ qualifications, Patent Owner does not contend that Mr. Carrothers is at least a person of ordinary skill in the art.7 Rather, Patent Owner argues that “[t]o put the asserted portions of Ludtke in context, Mr. Carrothers provided testimony regarding the processing of credit and debit card payments with respect to online transactions based on his expertise and experience with retail payments.” Sur-reply 1. Patent Owner uses Mr. Carrothers’ testimony to support arguments regarding the timing and parties to the communications generated by Ludtke’s system, and to support arguments that the TPCH is a party to Ludtke’s transactions. PO Resp. 13–17 (citing Ex. 2018 ¶¶ 20–31). We find that Mr. Carrothers testifies on technical details regarding unpatentability, and that a declarant testifying as to such subject matter should have at least ordinary skill in the art. Thus, Mr. Carrothers’ testimony is entitled to no weight. See Kyocera, 22 F.4th at 1376–77.” slip op. at 39
Patent outcomesUS 8,886,954 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,886,954 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00233 · APJ David C Mckone · IPR · Final written decision
Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In short, Patent Owner points to no language in the specification limiting the claims to transactions in which the application being accessed is, itself, a party to the transaction and Petitioner points to several examples in which the application being accessed is not a party to the transaction. Thus, Patent Owner has provided no persuasive basis to depart from the plain and ordinary meaning of the claims.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Differences, if any, between claims 1, 2, 4–7, 10, 12, 13, 15, 16, 18, 19, and 22–27 and Ludtke; reasons to modify Regarding claim limitations 1ai, 1aii, and 1aiii, Petitioner argues that Ludtke teaches persistently storing, in a user identity/account information block of the transaction device, biometric information (e.g., fingerprint, retinal scan, voice, DNA, hand profile, face recognition), a plurality of codes and other values comprising a device ID code uniquely identifying the transaction device (e.g., globally unique silicon ID (GUID), magnetic strip, bar codes), and a secret decryption value (e.g., public key infrastructure (PKI) public keys and private keys). Pet. 9–21 (citing Ex. 1005, 5:11–20, 8:63–67, 9:18–25, 10:64–67, 11:1–5, 13:27–29, 13:39–41, 14:13–21, 19:9– 14, 19:29–40, 23:11–19, 30:18–27, 37:39–45, 38:1–3, 38:9–21, 38:25–29, 38:40–61, 39:7–18, 40:5–26, Figs. 7B–7C, 27, 33; Ex. 1003 ¶¶ 73–94). Patent Owner does not contest Ludtke’s applicability to these aspects of claim 1. Based on Petitioner’s evidence, we find that Ludtke teaches claim limitations 1ai, 1aii, and 1aiii. More particularly, we find that Ludtke’s fingerprint, retinal scan, etc., are “biometric data”; that Ludtke’s GUID, magnetic strip, etc., are examples of “a device ID code uniquely identifying an integrated device”; and that PKI keys are examples of “a secret decryption value.” transaction device requests and receives a fingerprint sample or other biometric data. Id. at 21–22 (citing Ex. 1005, 14:33–42, 14:40–46, 16:47– 50; Ex. 1003 ¶¶ 95–96). As to claim limitation 1c, Petitioner argues that Ludtke’s transaction device compares the fingerprint sample to stored authorized samples to determine a match. Id. at 22 (citing Ex. 1005, 14:40– 46; Ex. 1003 ¶ 97). Patent Owner does not contest Ludtke’s applicability to these aspects of claim 1. We agree with Petitioner and find that Ludtke teaches claim limitations 1b and 1c.” slip op. at 23
Patent outcomesUS 8,886,954 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,886,954 - Tesla, Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 11, 2025 · IPR2025-00218 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the Kim and Vayanos combination did not show that each individual bit indicates a separate time interval, as required by claims 1–12.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“limitation 1.2 because it is more consistent with the claim language and the specification of the ’416 patent. The language “each of the plurality of bits” clearly individualizes the “plurality of bits” and the language “indicates a respective time interval that physical shared channel resources are utilized to signal channels” clearly ascribes to each individual bit the function of identifying a time interval that is separate from the time interval(s) that the other individual bit(s) identify. Petitioner’s claim constriction argument largely ignores the words used in limitation 1.2. Petitioner fails to provide anything to explain how or why the plain meaning of “each” and “respective” in the context of limitation 1.2 could be understood by a skilled artisan to connote something other than the plurality of bits individually identifying a separate and distinct time interval (i.e., a “one-to-one correspondence”). Petitioner similarly does not identify anything from the specification of the ’416 patent that would support deviating from the plain meaning of limitation 1.2. And Petitioner’s reliance on 3M Innovative Properties appears to miss the mark. Pet. Reply 7. In that case, the Federal Circuit held that, when a claim term has an “ascertainable definition in the body of the claim,” their “cases do not support prescribing a more particularized meaning unless a narrower construction is required by the specification or prosecution history.” 3M Innovative Properties Co., 725 F.3d at 1329. Here, however, Patent Owner is not attempting to import a more particularized meaning into limitation 1.2, but to demonstrate that the ’416 specification is consistent with the ascertainable definition of “each” and “respective” within the context of limitation 1.2. In particular, Patent Owner highlights that the ’416 specification describes the resource allocation technique as using an indicator bit, within a plurality of indicator bits, that has a one-to-one correspondence to a specific time window established for a Forward Access Channel (FACH). See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9; PO Resp. 11–14, 19–20; PO Sur-reply 2–3; Ex. 2001 ¶¶ 36–40, 49. And we agree that the ’416 specification informs, and is consistent with, the plain reading of limitation 1.2. See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9. Therefore, we determine that the plain and ordinary meaning of limitation 1.2 requires all the plurality of bits to individually identify a separate and distinct time interval that physical shared channel resources are utilized to signal channels.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“PICH, which is communicated to Kim’s receiver, has a plurality of bits, the evidence fails to demonstrate sufficiently that each of those bits indicates a respective time interval that physical shared channel resources are utilized to signal channels, as limitation 1.2 recites. As Patent Owner correctly argues, the Vayanos paging indicators use multiple bits to indicate information about a single time interval in a frame, rather having several bits that individually identify a separate and distinct time interval. PO Resp. 39–41 (citing Ex. 2001 ¶¶ 67, 74–75). Vayanos teaches that “[t]he number of paging indicators (Np) in each PICH frame is configurable by the system and can take on a value of 18, 36, 72 or 144,” and that “[e]ach paging indicator is sent in 288/Np consecutive bits in the PICH frame, where 288/Np can take on a value of 16, 8, 4 or 2.” Ex. 1006, 3:26–34. As a result, if there are 18 (Np = 18) paging indicators, 288/NP = 288/18 = 16 (meaning that each paging indicator is 16 bits long), if there are 36 (Np = 36) paging indicators, 288/Np = 288/36 = 8 (meaning that each paging indicator is 8 bits long), if there are 72 (Np=72) paging indicators, 288/Np = 288/72= 4 (meaning that each paging indicator is 4 bits long), and if there are 144 (Np=144) paging indicators, 288/Np = 288/144 = 2 (meaning that each paging indicator is 2 bits long). Ex. 2001 ¶ 66. Each paging indicator (singular) taught by Vayanos includes multiple bits––each paging indicator (singular) has either 16, 8, 4 or 2 bits–– and Vayanos does not disclose or suggest a paging indicator that indicates a time interval with only a single bit. Id. And Petitioner does not cite Kim to show the number of bits used to indicate a time interval; only to show that a UE would receive broadcast information with paging information including paging indicators that identify a time interval in which physical shared channel resources are utilized to signal channels. See Pet. 40–49. Even accepting that the Kim/Vayanos combination discloses a UE receiving a paging indicator that is indicative of a time interval in which a Paging Channel PCH may be found or indicative of whether a frame will include a signaling channel (e.g., PCH) at a specific TTI within that frame, the combination does not disclose or suggest using a paging indicator that is a single bit indicating either of those time intervals. On the contrary, as noted above, Vayanos teaches that all paging indicators consist of multiple bits and, thus, the Kim/Vayanos combination discloses a UE that only receives and uses a plurality of bits to indicate a time interval that physical shared channel resources are utilized to signal channels. This is insufficient to show a reasonable likelihood that Petitioner will be able to establish that the Kim/Vayanos combination discloses or suggests receiving a plurality of bits wherein the individual bits each identify a separate and distinct time interval. Therefore, Petitioner has not shown sufficiently that the Kim/Vayanos combination discloses or suggests the subject matter limitation 1.2 recites. For the above reasons, we are not persuaded that Petitioner has shown sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4 IV. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’416 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,136,416 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution
The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- BurdenDecided for patent owner
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,557,788 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCNo claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00300 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–38 were not shown unpatentable because Petitioner failed to establish Krupa as prior art and failed to show the claimed fluid-triggered valve sequence in Carr or Tolman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although we agree with Petitioner that the plain meaning of limitation 1.2 does not require the recited determination to occur at the first well, it does require the determination to be about the condition(s) of the fluid communicated to the first well by the manifold, regardless of where or how the information is gathered to make that determination. Limitation 1.2 recites plainly that the “determining” step is specifically about whether “the fluid communicated via the manifold has satisfied one or more conditions.” Ex. 1001, 22:38–39 (emphasis added). Considering the antecedents for “the fluid” and “the manifold”––i.e., “communicating fluid to a first well via a manifold” (id. at 22:35, limitation 1.1)––limitation 1.2 expressly identifies the fluid which “the manifold” has “communicated” to the first well to be exactly the fluid used for “determining” whether “one or more conditions” are “satisfied” to trigger the recited responses. Id. This is because “the fluid” refers to a fluid passing to a first well by way of a manifold and the past tense of “communicated via the manifold” indicates, more specifically, that it is the fluid passed by the manifold which must satisfy a condition(s). The Specification of ’770 patent illustrates this by checking the “frac rate” of the fluid discharged by a manifold to a first well to make the determination about whether to permit a regular swap or a continuous pumping swap (“CP swap”). Ex. 1001, 13:30–54, Fig. 12. Therefore, contrary to Petitioner’s representation that limitation 1.2 does not “requir[e] the fluid used for ‘determining’ to have been communicated to the first well” (Pet. Reply 3), the plain meaning of limitation 1.2 does require the fluid used” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“anticipated by, or would have been obvious over, Krupa necessarily requires Krupa to be first qualified as prior art. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (party’s burden to prove anticipation of a patent includes initial burden of going forward with evidence that there is anticipating prior art). Under 35 U.S.C. § 102(a)(2)— the subsection under which Petitioner contends Krupa qualifies as prior art—when the reference patent document’s actual filing date is before the challenged patent’s filing date, a petitioner need only refer to the filing dates appearing on the challenged patent and reference patent document to make prima facie showing that the reference is prior art. 35 U.S.C. § 102(d)(1) (“For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent.”).” slip op. at 16
- Strike new argumentNew argument disregardedDecided for patent owner
“We determine that the Petition did not adequately present Petitioner’s contention that Tolman discloses or suggests a “master valve” that a skilled artisan would understand to be the claimed “first valve,” which is first introduced in the Reply. The issue is whether Petitioner’s identification of Tolman’s “tree valve” for the claimed first valve was particular enough to allow Petitioner to rely specifically on the “master valve” in the well tree to show Tolman discloses the first valve. We find that it is not. It is undisputed that a well tree include several different valves: (1) valves for communicating fluid to a well (e.g., for treatment or stimulation); (2) valves for communicating fluid from a well (e.g., for flowback); and (3) valves for communicating fluid both to and from a well (e.g., master valve). See Reply 19–20; Ex. 1002 ¶¶ 542–545; Ex. 1044 ¶¶ 33–34, 38–42; Tr. 33:12–18, 34:3–12, 36:8–37:18, 39:4–17; Ex. 2013, 85:4–86:19, 87:1–12, 89:2–11. And the opening/closing of these different valves are controlled independently of the other valves based on different parameters. Id. identifying a tree valve, generally, does not provide the particularity necessary to provide notice that the master valve is the particular valve being relied upon. Further compounding this problem is the fact that the Petition repeatedly refers to a plurality of valves, rather than a singular “master valve.” The variability of possible valves suggested by simply referring to a tree valve fails to provide a level of particularity that clearly identifies which specific structure is being relied upon to perform which part of the recited procedure. Ultimately, we agree with Patent Owner that because the Petition does not specifically identify the master valve in the Petition, which the Petitioner’s Reply suggest was the intention all along, Patent Owner was put at a disadvantage because its ability to fully develop a response was impeded. Therefore, Petitioner’s reliance particularly on the “master valve” of the well tree, and the newly introduced evidence associated therewith, was improper and may not be considered. Nevertheless, as discussed below, even if Petitioner were allowed to rely on the master valve, we still find the Tolman Grounds to be deficient.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Carr does not disclose or suggest: relying on the condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 to be the determinative factor for causing first and second valves 470 and 472 to perform a sequenced response that includes–– (1) opening second valve 472, (2) communicating fluid to second well 142 through second valve 472, and (3) after opening second valve 472, closing first valve 150 from communicating fluid to first well 140. At the time of the invention, when a first well is being operated individually using high pressure pumping, we find that skilled artisans would have considered concurrent operation of the second well’s valves to be hazardous and activities that can not occur. See Ex. 1031, 4 (“specifically identified activities that were restricted from occurring at the same time (i.e., CAN NOT OCCUR activities). As an example, if the operations on a well involved high pressure pumping . . . then manipulating manifold well valves and wellhead trees valves on another well were not allowed to be performed concurrently”); Ex. 2012 ¶ 148. would have had a reasonable expectation of being able to successfully avoid the unacceptable hazards known to be associated with opening second valve 472 and communicating fluid to second well 142, while individually operating on first well 140 using high pressure pumping.10 Furthermore, Petitioner provides no persuasive evidence that a skilled artisan would have known that those unacceptable hazards could be avoided (or acceptably minimized) by using a condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 as a trigger for opening second valve 472 and communicating fluid to second well 142, while first well 140 is being individually operated.” slip op. at 34
Patent outcomesUS 11,560,770 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,560,770 - PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,405,457 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · May 15, 2025 · IPR2025-00043 · APJ Kevin F Turner · IPR · Institution
The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv based on the Texas litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner that its asserted trial date of February 17, 2026, would likely occur approximately 4 months before the latest date on which a final decision can be issued in this proceeding (June 12, 2026), and that is the metric we should use to determine the proximity of trial date to the projected statutory deadline. Accordingly, the facts underlying this factor weigh in favor of denial.” slip op. at 9
Discretionary denialPatents in suitUS 7,233,305 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01389 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–4 because Petitioner did not show a reasonable likelihood of establishing unpatentability under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 explained below, we do not institute an inter partes review of the ’000 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party proposes construing any claim term. Pet. 6; Prelim. Resp. 36. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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 7
- Skill levelSkill level board ownOther
“3 The parties do not dispute that a skilled artisan “would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services.” Pet. 6 (citing Ex. 1003 ¶ 85); Prelim. Resp. 35– 36. 4 The record does not include allegations or evidence of objective indicia of nonobviousness.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“connotes interactivity, and does not explain why a “Data Animation Effect” would be interactive.6 These aspects of Figure 53 do not appear to show interactivity. Thus, the issue is whether selecting a choice other than “Hide” for “Scroll buttons” in box 710 of Figure 53 adds to chart 840, once published, a feature that allows a user to interact with that chart via scrolling, or whether “Scroll buttons” refers to some other feature of the configuration process (such as the scroll buttons shown in Figure 53 for scrolling through the various charts in the layout). Both experts provide conclusory testimony stating how they view Figure 53. Ex. 1003 ¶ 181 (“For example, Figure 53 of Rostoker shows the ‘Configure Chart View’ toolbar, which includes multiple ‘interactive’ features, such as making the chart ‘Selectable’ (suggesting interactivity using an input device such as a mouse), including ‘Scroll buttons’ to scroll the chart, and adding ‘Data Animation[s].’”); Ex. 2001 ¶ 141 (“Schmandt relies on the ‘Configure Chart View’ toolbar of FIG. 53 of Rostoker, but he is confusing the configuration step 330 of Rostoker with the end result.”). Petitioner invites us to speculate as to the behavior of features that are depicted in Figure 53 but otherwise are not described in any meaningful detail by Rostoker. We conclude that this is insufficient to show a reasonable likelihood of prevailing.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,520,000 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01388 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–18 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 explained below, we do not institute an inter partes review of the ’595 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At most, Jou teaches that it was known to interact with charts in a Windows environment or a browser window. Ex. 1007 ¶ 34. But Rostoker already teaches that a user could interact with a chart, via a graphical user interface in a web browser, while configuring the chart. Ex. 1005 ¶¶ 67–75. Petitioner does not explain persuasively why a skilled artisan, per the teachings of Jou, would have made Rostoker’s published charts interactive. Mr. Schmandt’s testimony that a skilled artisan “would have been motivated to incorporate Jou’s additional ‘interactive’ features into Rostoker’s system to enable users to better visualize and explore business data,” is not supported by his citations to Jou, at least as to whether a skilled artisan would have modified Rostoker’s published charts. Ex. 1003 ¶ 259 (citing Ex. 1007 ¶¶ 8, 9). Petitioner’s argument that Flash and Java could enable interactive features, at most, show that a skilled artisan could have implemented interactive features with Rostoker’s a reason why a skilled artisan would have made these modifications. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))). Thus, we are not persuaded that Petitioner is likely to show that a skilled artisan would have incorporated Jou’s interactive features into Rostoker to make Rostoker’s published charts interactive.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“client is required for display and usage of an existing QlikView document (.qvw file). While the QlikView Server is responsible for opening, hosting, and calculating the document, the clients are required for user interaction and presenting the document and its objects.” Ex. 1009, 123. Petitioner points to no persuasive evidence that a Java or AJAX object or client executing at a web browser is a website separate from the server that serves the object or client. Mr. Schmandt makes conclusory statements to that effect, but does not state the basis for his testimony. Ex. 1003 ¶¶ 338–339. Thus, Mr. Schmandt’s testimony on this point is entitled to little weight. 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.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and support, and is entitled to little weight.”).” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,712,595
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.