- Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution deniedPTAB · Oct 20, 2025 · IPR2025-00480 · APJ Lisa A Murray · IPR · Institution
The Board denied institution because the Elliott/Jacob grounds did not show a reasonable likelihood that claims 1–15 were unpatentable, and Musk did not cure the deficiencies.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c) Summary We may institute an inter partes review when “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). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a Bachelors’ degree in electrical or computer science or a comparable field of study, plus at least three years of professional experience in advertisement delivery systems or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 3; Ex. 1002 ¶ 79. Patent Owner does not offer a competing formulation, stating that “[f]or purposes of this preliminary response only, Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 12. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’296 Patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After reviewing the parties’ arguments and evidence, we determine that no express constructions of the terms identified by Petitioner are needed 6 For the term “recording a request identifier associated with the request,” Petitioner asserts that it is unclear which “request” is at issue, Pet. 7–8, while Patent Owner argues that “the ‘request’ refers to the ‘request for content to be used within the registered application program’ as described in claim element 1.h.” Prelim. Resp. 13. For the reasons discussed below, we determine that it is not necessary for us to construe this term for purposes of this Decision. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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)). C.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“as obvious over the combination of Elliott and Jacob. Pet. 9–60. Patent Owner contests Petitioner’s mapping of the cited prior art to four limitations in independent claim 1 (and the commensurate limitations in independent claims 6 and 11): limitations [1.a], [1.b], [1.d], and [1.e]. Prelim. Resp. 14– 39. Patent Owner also argues that one of ordinary skill in the art would not have been motivated to modify Elliott with the teachings of Jacob. Id. at 39– 46. We agree with Patent Owner that the proposed combination does not teach or suggest elements [1.a] and [1.e], for the reasons discussed below. Because the absence of these two elements from the cited prior art is a sufficient basis for denying institution, we do not address Patent Owner’s remaining arguments.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,433,296 - Activision Blizzard, Inc. v. Milestone Entertainment, LLCInstitution deniedPTAB · Oct 16, 2025 · IPR2025-00713 · APJ Linda E Horner · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Kelly, alone or with Paulsen, renders any challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response shows “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 Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition.” slip op. at 2
- BurdenNot shown unpatentable
“We agree with Patent Owner that Petitioner has failed to provide adequate evidence and analysis to show that Kelly discloses storing the identified user input in Kelly’s system. For instance, the portion of Kelly relied upon in the Petition describes how user input provides a particular game command to game processor 12, and game processor 12 interprets and uses this input to influence game states and game events. Ex. 1005, 10:12– 15. The portion of Kelly makes no mention of storing the user input. Petitioner also cites generally to other portions of Kelly with insufficient explanation of their relevance. Pet. 22; Ex. 1003 ¶ 136 (citing 1:44–46, 9:62–66, 46:32–37, 46:49–52). These cited passages describe generally that a computer, on which games are played, includes a video screen and buttons, and that user input is provided to a game unit to influence game events and/or provide particular game commands to the computer. Ex. 1005, 1:44–46, 9:62–66, 46:32–37, 46:49–52. Petitioner fails to sufficiently show how any of these passages describes storing user input, such as button presses, in Kelly’s system.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.6 Based on the testimony of Mr. Crevelt, 6 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 16 (citing Ex. 1003 ¶¶ 102–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’607 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11
Nonecites Phillips · GrahamPatents in suitUS 11,501,607 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00834 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 10–14, and 16–21 were obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited step of “converting the first electrical binary data signal in the pluggable optical transceiver module to a first electrical m-ary modulation signal.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Each of claims 2, 3, 5, 10, 13, 14, and 16–21 depends directly or indirectly from independent claim 1, and Petitioner challenges these claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:23–28, 32–35, 16:9–11, 16:18–25, 16:30–43; Pet. 46–56. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of these dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5, 10, 13, 14, and 16–21. 3. Asserted Obviousness of Claims 11 and 12 over Pang, Vrazel and Yee (Ground 2). Claims 11 and 12 depend directly from claim 1. Petitioner does not rely on Yee to remedy the deficiencies discussed above concerning the “converting” to “m-ary modulation” signal step, but rather relies on its arguments associated with claim 1. See Pet. 59–60. We already addressed those arguments, and we find those arguments unavailing for the reasons stated above. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 11 and 12.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III CONCLUSION For the foregoing reasons, we deny institution of an inter partes review.2 IV, ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 2 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential) or under 35 U.S.C. § 325(d). See Prelim. Resp. 33– 54.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III CONCLUSION For the foregoing reasons, we deny institution of an inter partes review.2 IV, ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 2 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential) or under 35 U.S.C. § 325(d). See Prelim. Resp. 33– 54.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner asserts that a POSITA would have “at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing,” wherein “[m]ore experience can supplement less education and vice versa.” Pet. 6 (citing Ex. 1003 ¶ 38). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,887,795 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00838 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show that Vrazel’s encoder or encoder and pre-distorter provided the claimed m-ary modulator for claims 1–3, 5, 6, 8, 10–17, 22, and 23.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited “m-ary modulator” in any of the challenged independent claims. We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claims 1, 22, or 23 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because it is dispositive, we focus our analysis on each independent claim’s recitation of “an m-ary modulator for increasing the number of bits per symbol in the first electrical data signal to produce a first m-ary modulation signal.” Ex. 1001, 15:6–8 (claim 1), 17:13–15 (claim 22), 18:9– 11 (claim 23). In addressing this limitation, Petitioner relies solely on Vrazel, which Petitioner contends “discloses this limitation in at least two ways.” Pet. 28 (addressing claim 1), 64 (addressing claim 22 by referring to analysis for claim 1), 66 (addressing claim 23 by referring to analysis for claim 1).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,771,181 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00835 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–7, 9, and 11–20 were unpatentable over Pang and Vrazel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing.” Pet. 7. Petitioner adds that “[m]ore experience can supplement less education and vice versa,” and supports its proposal with testimony by Dr. Min. Id.; Ex. 1003 ¶ 41. Patent Owner does not specifically address the level of ordinary skill in its Preliminary Response. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Min’s testimony, we adopt it for purposes of this Decision. 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6–7. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,263,723 - Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Nov 6, 2023 · IPR2023-00677 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–19 were obvious over Rockwood and Xie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Summary In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Rockwood and Xie. Claims 2–7, 9–15, and 17–19 depend from claims 1, 8, or 16. Accordingly, we also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion as to these dependent claims. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’045 patent. Therefore, we do not institute trial.10 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“10 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the petition based on the state of the related litigation. See Prelim. Resp. 2–19.” slip op. at 23
- BurdenNot shown unpatentable
“For these reasons, we find Petitioner’s first mapping insufficient to establish a reasonable likelihood that Petitioner can prove the challenged claims unpatentable in view of Rockwood and Xie.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We additionally find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile); but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in Petitioner’s proposed combination. See Pet. 17–18. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,8 whereas Xie’s system looks for similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood.” slip op. at 18
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,578,045 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00680 · APJ Thu A Dang · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“5. 35 U.S.C. § 325(d) Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.3 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
Discretionary denialPatents in suitUS 9,887,795 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00681 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and Petitioner had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art and arguments that are substantially the same as previously evaluated by the Office.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,263,723 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00682 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,771,181 - Trend Micro, Inc. v. Webroot Inc.Institution deniedPTAB · Oct 13, 2023 · IPR2023-00662 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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(a) (2018). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review. B.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“4 Petitioner also cites page 10 of Tahan, but we find no mention of either SVP or SVM there, and Petitioner does not explain where it might be disclosed. 5 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the state of the related litigation. See Prelim. Resp. 3–18.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or machine learning” and that “[m]ore education can supplement practical experience and vice versa” Pet. 9 (citing Ex. 1002 ¶ 94). Patent Owner “does not dispute Petitioner’s articulation of the level of ordinary skill.” Prelim. Resp. 29. 1 Gil Tahan, et al., Mal-ID: Automatic Malware Detection Using Common Segment Analysis and Meta-Features, Journal of Machine Learning Research 13, 949–979 (April 13, 2012) (Exhibit 1003). 2 Eitan Menahem, et al., Improving Malware Detection by Applying Multi- Inducer Ensemble, Computational Statistics & Data Analysis 53, 1483–1494 (2009) (Exhibit 1004). 3 U.S. Patent App. Pub. No. 2009/0254992 A1 (Exhibit 1005). For purposes of this decision, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’844 patent. B.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “all claim terms should be given their plain and ordinary meanings.” Pet. 9. For its part, Patent Owner “agree[s] that no claim terms need be construed for this petition,” and that “all claim terms should carry their plain and ordinary meaning in light of the intrinsic record.” Prelim. Resp. 27. We find that no express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,599,844
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.