- PTAB · Mar 13, 2025 · IPR2024-01305 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–9 over all asserted grounds, finding a reasonable likelihood that the challenged claims would be shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 that follow, we institute an inter partes review as to claims 1–9 of the ’687 patent on all grounds of unpatentability presented.” slip op. at 2
- Parallel petitionsOther
“1 Of note, Petitioner concurrently filed another petition challenging claims 19–25 and 27–30 of the ’687 patent in IPR2024-01307. Pet. 3–4; Paper 3, 3. Petitioner also filed a ranking of the two petitions in which it ranked the petition in IPR2024-01307 first and the instant Petition second. Paper 3, 3. Notwithstanding, Patent Owner does not put forth any arguments seeking discretionary denial under 35 U.S.C. § 314(a) related to Petitioner’s use of more than one petition against the ’687 patent. Moreover, we are satisfied by Petitioner’s stated reasons for filing two petitions. See Paper 3, 2–3.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 13 (citing Ex. 1001 ¶¶ 72–76). Patent Owner cites testimony from Dr. Rubin and contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 8 (citing Ex. 2001 ¶ 99). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 101), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’687 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“ordinary meaning. Pet. 6. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 37 (citing Ex. 1001 ¶ 352). Thus, Petitioner argues that an “event socket” is “a socket where information about one sporting event is provided to a VCD.” Id. Patent Owner states that “[e]xcept for the ‘event socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 8. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.” We determine that no other aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,805,687 - PTAB · Mar 6, 2025 · IPR2024-01309 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 19–25 and 27–30, finding a reasonable likelihood that claims in both § 103 grounds would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’697 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this early stage, therefore, for the terms which are not contested (all except for the limitation 27.3 means plus function term, addressed below) we use Petitioner’s proposed constructions for the means-plus-function terms with one exception. Specifically, based on the structure and dependency of claim 30, we determine preliminarily that the preamble of claim 30 is non-limiting and does not require construction as a means-plus-function limitation. We use the ordinary and customary meaning of the other claim terms and we decline to provide an express construction of any other claim term. slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner argues “under” Petitioner’s proposed construction of “socket,” the Petitioner is deficient. Prelim. Resp. 39–40. At this early stage, Patent Owner does not dispute Petitioner’s construction for either “event socket” or “socket,” and, indeed, applies Petitioner’s proposed construction of “socket.” Id. For purposes of this Decision, we apply Petitioner’s construction of “socket” and “event socket.”” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,425,697 - PTAB · Mar 6, 2025 · IPR2024-01308 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–9 on all asserted grounds, finding a reasonable likelihood that claims 1, 7–9 are obvious over Ellis and Spivey, claims 2–6 over Ellis, Spivey, and Herzog, and claims 1–9 …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’697 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. We, therefore, consider the merits of the instant petition, and, for the reasons given below, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’697 patent.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“At this early stage, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 37) are not disputed by Patent Owner. Prelim. Resp. 10. Neither party provides an express construction for any other claim term. See generally Pet.; Prelim. Resp. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this preliminary stage in the proceeding, we use Petitioner’s proposed construction for “socket” and 4 POSA and POSITA refer to a person of ordinary skill in the art. “event socket” and the ordinary and customary meaning of the other claim terms. We decline to provide further analysis or an express construction of any other claim term as doing so is not needed to resolve the dispute between the parties.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,425,697 - Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Remand
Claims 13, 14, and 17–27 were not shown unpatentable because Tennant did not establish that Wikey or Davies inherently disclosed the claimed microbubbles and nanobubbles.
RulingsRemand decision- RemandOther
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11. On September 19, 2024, we authorized the parties to file supplemental briefing, stating also that the “parties are not authorized to present new factual assertions, provide additional exhibits, or raise new arguments beyond those directed to the issues raised in the remand.” Ex. 3001. Pursuant to this authorization, Petitioner filed an Opening Brief on Remand (Paper 61; “Pet. Br. Rem.”) in support of its contentions. Patent Owner filed a Lead Brief on Remand (Paper 62; “PO Br. Rem.”) in support of its contentions. Petitioner filed a Reply Brief on Remand (Paper 66; “Pet. Reply Br. Rem.”). Patent Owner filed a Responsive Brief on Remand (Paper 65; “PO Resp. Br. Rem.”).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Accordingly, and in line with our previous determination that “Wikey appears to disclose each limitation of claim 13 except ‘microbubbles and nanobubbles having a bubble diameter of less than 50 microns’” (Final Dec. 20), we determine that Petitioner has not demonstrated that Wikey inherently discloses microbubbles or nanobubbles. Accordingly, Petitioner has not demonstrated that Wikey discloses every limitation of claim 13.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11.” slip op. at 3
Patent outcomesUS RE45,415 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · Feb 19, 2025 · IPR2024-00124 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 7, 10–14, and 16 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Neufeld.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’140 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience in the field of computer and/or network design and security or other relevant industry experience,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 7–8 (citing Ex. 1046 ¶ 54). Patent Owner does not address Petitioner’s definition, nor provide its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 7–8. We view this and the asserted prior art, and we apply it in our analysis below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that the “said managed network element,” as recited in claim 1 means “said managed network device.” Pet. 9. At this stage, Patent Owner does not dispute this construction. We adopt Petitioner’s proposed construction for this term as it appears to be consistent with the Specification’s use of “element” as referring to networked devices, and with the overall claim. See generally Ex. 1002.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner
“Petitioner does not explain why we should adopt its proposed constructions for these means-plus-function terms. Rather, Petitioner states that it adopts the district court’s constructions for these terms from a related district court litigation. Id. at 9. We note, however, the following guidance for proceedings before the Board as it relates to claim construction: The Board will determine the claim construction based on the record of the proceeding at issue. Thus, as in a district court proceeding, the parties should point out the specific portions of the specification, prosecution history, and relevant extrinsic evidence they want considered, and explain the relevancy of any such evidence to the arguments they advance. Each party bears the burden of providing sufficient support for any construction advanced by that party. Consolidated Trial Practice Guide (Nov. 2019)10 (“CTPG”) 46. Patent Owner does not set forth any term for construction, nor address Petitioner’s construction arguments. See generally Prelim. Resp. At this stage, we adopt Petitioner’s proposed constructions for these means-plus-function terms. Petitioner sufficiently identifies the recited functions and the specific portions of the specification corresponding to each recited function. See 37 C.F.R. § 42.104(b)(3). And these proposed constructions are undisputed, at this stage. In addition, we consider the Construction Order from the related district court litigation, but we note that it provides no reasoning for why the terms were construed as they were. 37 C.F.R. § 42.100(b); Ex. 1042 (Claim Construction Order), 1 (“This order memorializes the Court’s final constructions of the disputed terms in this” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,325,140 - PTAB · Feb 19, 2025 · IPR2024-00109 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 6–9, 12, and 14–17, finding a reasonable likelihood that claim 1 is obvious over Neufeld.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’016 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience in the field of computer and/or network design and security or other relevant industry experience,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 6 (citing Ex. 1003 ¶ 56). Patent Owner does not address Petitioner’s definition, nor provide its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 6. We view this definition for the level of ordinary skill as consistent with the ’016 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We determine that we need not expressly construe any claim terms for purposes of our Decision on Institution, and we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Neufeld and PCI Bridge Spec’s teachings in the manner Petitioner does. See that one of ordinary skill in the art “would have recognized that the local bus 166 could have been implemented as a PCI bus” in light of Neufeld’s teaching that “[t]he implementation details of the internal local bus 166 are a matter of design choice.” Ex. 1005 ¶ 56; Pet. 39. And we credit Dr. Meldal’s testimony that one of ordinary skill in the art “would have understood that a PCI bus would have been acceptable for the relatively (with respect to, e.g., the front side bus for Neufeld’s CPU 3) low bandwidth that would be necessary for Neufeld’s remote management controller 116.” Ex. 1003 ¶ 134. The bus leading to the remote management controller 116 (the PCI bus 16/PCI bus 172) being a PCI bus supports the acceptability of using a PCI bus for the internal local bus 166. Id.; see also KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem [(i.e., choosing a bus protocol)] and there are a finite number of identified, predictable solutions, [(i.e., a finite number of known protocols)] a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”). At this stage, we find unavailing Patent Owner’s argument that “there is no need for [one of ordinary skill in the art] to look elsewhere for guidance on implementing Neufeld’s ATB 170 as a bridge to the local bus 166” because Neufeld teaches that the implementation details of the internal local bus 166 are a matter of design choice. Prelim. Resp. 48. Rather, as we discuss above, one of ordinary skill in the art would have found it obvious for the internal local bus 166 to constitute a PCI bus, and as such would have having a bridge (the ATB unit 170) between two PCI buses. Moreover, PCI Bridge Spec also evidences the knowledge of one of ordinary skill in the art that we appropriately consider as part of our obviousness analysis. Randall Mfg., 733 F.3d at 1362–63. Thus, when one of ordinary skill in the art would have been motivated to employ a PCI bus for the internal local bus 166, the knowledge of also needing a controller should be considered. See id.; Ex. 1008, 109 (“Every bus segment in a PCI system requires an arbiter. Since a bridge creates a new bus segment, it is anticipated that an arbiter will be a common bridge feature.”); cf. Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony that an element “was not only in the prior art, but also within the general knowledge of a skilled artisan”).” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,474,016 - PTAB · Feb 14, 2025 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Institution
Instituted review of claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a relatively high level of skill, such as having at least a bachelor’s degree in the field of computer science and/or electrical engineering, together with 2–3 years in the financial technology sector.” Pet. 16. Petitioner adds that a person having ordinary skill in the art “would have knowledge of the commercial and scientific literature pertaining to securing transactions” and “would also have knowledge of processing devices.” Id. at 16–17 (citing Ex. 1002 ¶ 19). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this stage of the proceeding, we are not persuaded that the term “embedded” should be narrowly construed in the manner proposed by Patent Owner. We find nothing in the claims that requires us to import a “hidden” or a “provide security” limitation into the claims. Claim 1, for example, merely recites “the image having information embedded therein, including information related to a transaction,” and “generat[ing] an output based on the information embedded in the image.” Ex. 1001, 16:24–33 (emphasis added). The claim language therefore does not require limiting embedded information in the proposed way.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“As discussed above, disclaiming or disavowing claim scope requires a “clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1367. We are not persuaded that the cited portion can be read to clearly and unmistakably disavow claim scope. The cited portion of the Specification discusses various input parameters for decoding a captured image. Ex. 1001, 6:8–10. When viewed in context, “other information” refers to other predetermined information, including “the corresponding private key,” “stored in the memory 150,” which “may be used to decrypt or decode the captured image.” Id. at 6:13–22; see also id. at 5:18–20 (private keys are stored in memory). We therefore read the Specification as merely listing possible input parameters for decoding an image and not disclaiming “the corresponding private key” from the scope of “predetermined information.” After all, the very next sentence states that “predetermined information may include, for example, address information, personal profile information, and payment account information.” Id. at 6:17–22 (emphasis added). Given the various broad categories included in “predetermined information,” we are not persuaded, for purposes of institution, that “predetermined information” excludes a private key. We further determine that this preliminary construction is sufficient to resolve the Petitioner’s anticipation and obviousness contentions presented under Petitioner’s Ground 1, and no further construction of the term is necessary.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,314,167 - PTAB · Jan 27, 2025 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR of claims 1–21 on all petitioned challenges after finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- 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). The” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Factor 1 is neutral, Factors 2 and 5 favor discretionary denial, and Factors 3 and 4 weighs against discretionary denial. As set forth above, we determine that balance of the first five Fintiv factors do not favor discretionary denial, and thus, we need not assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). 7. Fintiv Determination The balance of all Fintiv factors do not favor the exercise of our discretionary powers to deny institution. Therefore, we determine that discretionary denial is not appropriate in this case.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics” or “AB”). Under the first prong of that framework, we must determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we turn to the second prong which focuses on whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“of at least Oct. 25, 2013. Prelim. Resp. 47–48. Patent Owner does not assert that any of petitioner’s references fail to qualify as prior art, except Kleve. Patent Owner asserts that “Kleve is not ‘prior art consisting of patents or printed publications’ as required by § 311(b).” Id. at 48. Although Patent Owner concedes that Kleve is a patent publication, Patent Owner argues it is not prior art consisting of a patent, and Petitioner has not shown Kleve was publicly available before its publication date of May 8, 2014. Id. (citing Ex. 1005, 1). Furthermore, Patent Owner “notes that this issue is currently on appeal before the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., No. 2023-2346 (Fed. Cir.).” Prelim. Resp. 48–49 n. 4; Prelim. Sur-reply 5. The Federal Circuit recently issued a decision in Lynk Labs and found that “a published patent application can be deemed prior art in an IPR as of the application’s filing date.” Lynk Labs, Inc., No. 2023-2346 (Fed. Cir. Jan. 14, 2025) (affirming the Board’s holding that under § 102, applicable “printed publications” include published applications under § 102(e)(1)). Accordingly, in view of the Federal Circuit’s decision, we are not persuaded by Patent Owner’s argument, which is contrary to the law applied by PTAB.” slip op. at 31
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,738,659 - Directv, LLC v. Entropic Communications, LLCInstitution deniedPTAB · Jan 22, 2025 · IPR2024-01061 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of prevailing, and denied joinder to the non-instituted DISH Network IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the same reasons discussed in our Decision Denying Institution of the DISH Network IPR, Paper 14, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any claim.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder is only permissible, however, when the inter partes review Petitioner seeks to join has been instituted. 35 U.S.C. § 315(c). As the DISH Network IPR has not been instituted, we do not grant Petitioner’s Motion for Joinder.” slip op. at 3
NonePatents in suitUS 7,889,759 - PTAB · Jan 15, 2025 · IPR2024-01044 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1, 4, 8–23, and 27 on all asserted grounds, finding a reasonable likelihood that Jones renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’629 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 2–4 years of experience in the field of wireless communication,” and that “[e]quivalent education, work, or experience in this field could substitute for the foregoing qualifications.” Pet. 20 (citing Ex. 1005 ¶ 82). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 22. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 20. We view the” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term that we need to construe. Pet. 5–6; Prelim. Resp. 23. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“52 subcarriers are used while “the DC subcarrier and 11 subcarriers near the edges of the 20 MHZ channel are not used for data transmission” (i.e., are set to zero). Ex. 1014, 2:14–30 (explaining the long training sequence for a conventional 802.11a preamble), 6:11–15. Notably, Jones also teaches that “packet formation block 314 may insert appropriate complex values at unused . . . subcarrier locations in each group of symbols D[k],” and that “any or all of the subcarriers k may be used to transmit data, thereby increasing the data rate.” Id. at 6:15–20 (emphasis added); see also id. at 8:22–24 (teaching that an extended long training sequence “can contain more than 52 non-zero subcarriers”). At this stage, we credit Dr. Buehrer’s testimony that one of ordinary skill in the art would have been motivated to “add[] four subcarriers to 802.11a data and training fields [to] increase[] data rate throughput as taught in . . . Jones,” as this testimony is consistent with Jones’s teachings. Ex. 1005 ¶ 107. In addition, we agree with Petitioner and find that one of ordinary skill in the art extending the long training sequence would want to use the same 52 center subcarriers to maintain backwards compatibility with 802.11a. Pet. 28–29. This is supported by Jones’s teaching of having a long training sequence that “is usable in a process for determining whether the packet is an 802.11a packet or an extended-mode packet.” Ex. 1014, 8:37– 40. Moreover, Jones’s L2 example of an extended long training sequence maintains the same 52 center subcarriers as 802.11a, which also supports this finding. Id. at Fig. 4; Ex. 1005 ¶¶ 96, 113. Thus, up to 11 subcarriers unused in 802.11a could be used for an extended long training sequence. “more than 52 non-zero subcarriers” can be used for an extended long training sequence, which explicitly teaches that only a portion of the 11 subcarriers may be used. Ex. 1014, 6:15–20, 8:22–24. In light of the above teachings, we find that one of ordinary skill in the art would have found it obvious to use only the next 4 nearest to the center of these 11 unused subcarriers. Ex. 1005 ¶ 87. The remaining 7 subcarriers would remain at zero.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · Graham
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.