- Jumio Corp. v. Facetec, Inc.No claims unpatentablePTAB · Jun 17, 2026 · IPR2025-00108 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–24 were not shown unpatentable because the asserted combinations lacked adequate motivation to combine and did not teach capturing images at different distances.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 27–28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 13–14. In particular, based on the teachings of the ’938 patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’938 patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret claim terms 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).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“images are three dimensional—let alone a technique that captures two images at different distances, compares the images for certain differences, and verifies three dimensionality based on those differences, as recited by the claim. Instead, Tanii describes a system that “corrects warp in which the perspective is exaggerated when an image is captured with the user’s face at close range.” Ex. 1007, code (57). In particular, Tanii recognizes the physical phenomenon of perspective distortion (fish-eye distortion) where “[i]f the image of the face of a person or the like is captured from a point that is relatively nearby, an image is obtained in which the perspective appears exaggerated,” i.e., the user image is warped or distorted. Id. ¶ 6; see id. ¶ 48, Fig. 4B. Tanii corrects such warped images by enlarging peripheral areas of the user image. Id. ¶¶ 55–56.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“distance from the user. Derakhshani teaches two different approaches: (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 12 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Derakhshani, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, instead, focused specifically on the use of the word “slid” in Derakhshani as indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Derakhshani, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject.” slip op. at 27
Patent outcomesUS 11,693,938 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 11,693,938 - Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15
Patent outcomesUS 8,558,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,558,223 - Qualcomm Incorporated v. Unm Rainforest InnovationsAll claims unpatentablePTAB · Sep 30, 2025 · IPR2021-00375 · APJ Kristen L Droesch · IPR · Remand
Proposed substitute claims 44–47, 49, and 50 are unpatentable as obvious under collateral estoppel; the Board denied Patent Owner’s motion to amend.
RulingsRemand decision- RemandOther
“the Acting Director of the USPTO (Paper 81, “Acting Director’s Order”) and after a decision by the U.S. Court of Appeals for the Federal Circuit (“the Federal Circuit”) in ZyXEL Communications Corp. v. UNM Rainforest Innovations, 107 F.4th 1368 (Fed. Cir. 2024) (“Federal Circuit Decision”) regarding the Board’s original Final Written Decision (Paper 68, “Final Written Decision” or “Final Dec.”) in this proceeding. In particular, the court remanded to the Board to determine if proposed substitute claims 44–47, 49, and 50 are unpatentable as obvious under collateral estoppel based on the court’s holding that claims 1–4 and 6–8 are unpatentable as obvious. ZyXEL, 107 F.4th at 1371, 1384.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“proposed substitute claim 44 presents the same issues as those litigated before the Federal Circuit: whether it would have been obvious to a person of ordinary skill in the art to include the first key element and whether it would have been obvious to a person of ordinary skill in the art to include the second key element.” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Final Written Decision, and the Federal Circuit Decision, as well as the postremand briefing, we determine that the application of collateral estoppel to proposed substitute claim 44 is appropriate. It is also appropriate to apply collateral estoppel to substitute claims 45–47, 49, and 50. This is because proposed substitute claims 45–47, 49, and 50 depend from proposed substitute claim 44 and recite identical limitations to dependent claims 2–4, 6, and 7. Therefore, the resolution of the question of obviousness of the subject matter of proposed substitute claims 45–47, 49, and 50 necessarily presents the same issues of whether it would have been obvious to a person of ordinary skill in the art to include the first key element and whether it would have been obvious to a person of ordinary skill in the art to include the second key element.” slip op. at 11
Patent outcomesUS 8,265,096 unpatentable§ 103 obviousnessPatents in suitUS 8,265,096 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · Aug 1, 2025 · IPR2025-00442 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed all challenged claims, 1–20.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“May 22, 2025, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–20 of the ’154 patent. Ex. 2001. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–20.” slip op. at 2
NonePatents in suitUS 11,627,154 - Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-00343 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Rădulescu2004 and OCP; the Board did not reach the Weber-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“35 U.S.C. § 112 ¶ 6 (2006). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). “[This] presumption may be rebutted if the properly construed claim limitation itself recites sufficiently definite structure to perform the claimed function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“Ex. 1001, 4:46–50. This passage indicates that the interconnect can be a network on a chip and the network on a chip can include wires and buses. That does not necessarily mean that the interconnect can be just wires or buses; rather, it discloses that the interconnect can include wires and buses. In context, the disclosure regarding wires and buses does not support construing the corresponding structure broadly enough to encompass just wires and buses. The networks that constitute the corresponding structure, however, could include networks with wires and buses. Therefore, we agree with Patent Owner that the corresponding structure for the interconnect means should not include a mere bus, switch, and point-to-point wire and instead find that the corresponding structure under 35 U.S.C. § 112 ¶ 6 is a network, which the ’052 patent describes as a multi-hop interconnection between modules separated by one or more network nodes. See Ex. 1001, 2:33–37. Because this structure corresponds to the construction of “interconnect means” proposed by Patent Owner and adopted by the district courts in the TI and Qualcomm litigations (see supra Section III.C.3.b), and we do not rely in our analysis below on a recourse to “equivalents thereto” as permitted by § 112 ¶ 6, we note that our ultimate conclusions on the unpatentability of the challenged claims would be the same if § 112 ¶ 6 did not apply. iii. Conclusion For the reasons stated above, we construe “interconnect means” to cover the structure described in the Specification corresponding to the specified functions of “coupling said plurality of processing modules (M, S)” in the context of claim 6 and “coupling said plurality of processing modules (M, S)” and “enabling a connection-based communication having a set of connection properties” in the context of claims 1 and 7—i.e., a “multi-hop interconnection between modules separated by one or more network nodes”—and equivalents thereof.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “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))).” slip op. at 15
Patent outcomesUS 7,594,052 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,594,052 - Jumio Corporation v. Facetec, Inc.InstitutedPTAB · Jun 9, 2025 · IPR2025-00109 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Derakhshani and Tanii.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Institution of Inter Partes Review As discussed above, at this stage in the proceeding, we determine Petitioner has established a reasonable likelihood that the combination of Derakhshani and Tanii teaches the limitations of claim 1 and a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over Derakhshani and Tanii. Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Derakhshani, alone or combined with Tanii, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 22
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner acknowledges that, in this IPR, “the time-bar is not implicated.” Prelim. Resp. 5–6. Nevertheless, Patent Owner argues that we should reach the RPI question here because other IPRs challenging different patents implicate the time bar under 35 U.S.C. § 315(b). Id. at 5–6. Patent Owner’s request effectively asks us to extend the § 315(b) time bar to implicate patents not asserted in an applicable infringement complaint. We decline to do so. The plain language of § 315(b) does not extend the time bar to any patent other than the patent subject to the instant petition: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent (emphasis added). Nor are we aware of any other authority which requires us to interpret § 315(b) to extend the time bar to patents other than the challenged one. Because Patent Owner admits this Petition challenging the ’910 Patent is not time barred, the treatment in SharkNinja controls. Accordingly, on this record, we need not consider whether iProov must be named as an RPI and decline to deny institution under 35 U.S.C. § 312(a)(2).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“A. 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“B. 35 U.S.C. § 325(d) Patent Owner argues we should deny institution under 35 U.S.C. § 325(d) because Petitioner’s asserted references are the same or substantively as those the Office previously considered during prosecution. Prelim. Resp. 18–33. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 9–16. For the same reasons we explained there, we decline exercising our discretion to deny institution under § 325(d).” slip op. at 9
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,874,910 - Jumio Corp. v. Facetec, Inc.InstitutedPTAB · Jun 9, 2025 · IPR2025-00108 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We need not consider whether iProov must be named as an RPI because Patent Owner does not allege that the failure to name iProov would implicate time bar, estoppel, or anything else material to this case. Our precedential authority, SharkNinja Operating LLC et al. v. iRobot Corp., controls this case, and explains that we need not determine whether a third party is an RPI to the Petitioner because “even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” IPR2020-00734, Paper 11, 18–19 (P.T.A.B. Oct. 6, 2020) (precedential).” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“EXERCISE OF DISCRECTION A. 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court cases. Prelim. Resp. 47–56. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion – Claim 1 For the foregoing reasons, we determine Petitioner has established a reasonable likelihood that the combination of Derakhshani and Tanii teaches the limitations of claim 1 and a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over Derakhshani and Tanii. Our determination is not final and based only on the current record and arguments. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,693,938 - Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3
Discretionary denialPatents in suitUS 9,814,071 - Crowdstrike, Inc. v. Gosecure, Inc.Institution deniedPTAB · May 6, 2025 · IPR2025-00067 · APJ Garth D Baer · IPR · Institution
The Board denied institution for claims 1–23 because the cited art did not teach or suggest creating the claimed fingerprint at the virtual machine monitor.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’697 patent is unpatentable. We therefore do not institute trial on any challenged claims or grounds raised in the Petition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 9,106,697 - PTAB · Apr 23, 2025 · IPR2024-01373 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–9 and 18–24 over all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In determining whether to exercise this discretion based on a related litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co. v. Intri- Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(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, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Of the ten claims challenged here, only two (claims 9 and 24) were challenged on the same ground in the Canon IPR—obviousness over Niikawa. Canon IPR, Paper 10 at 3. Thus, Patent Owner’s request fails under the first prong of Advanced Bionics. Moreover, the Board denied the Canon IPR largely due to the immediacy of an upcoming district court trial. Id. at 5–12. Thus, even if Patent Owner’s request did not fail under the first prong of Advanced Bionics, the request would fail under the second prong,” slip op. at 28
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“The Board considers and weighs several factors when deciding whether to institute review in light of a previously filed inter partes review challenging the same patent. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). Principal among them is the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Id. at 16. This factor has been extended to consider not only whether the petitioner is the same as a previous petitioner, but whether the petitioner has “a significant relationship” with the previous petitioner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9– 10 (PTAB Apr. 2, 2019) (precedential). The Director has found that when two petitions challenge the same patent and “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. v. Rotolight, IPR2023-01218, Paper 12 at 5–6 (PTAB Apr. 19, 2024) (emphasis added). Petitioner and Sony are not the same party and the entities that” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“m) Conclusion regarding claim 9 For the reasons discussed above, we find at this stage of the proceeding, Petitioner demonstrates a reasonable likelihood of showing the combination of Niikawa and Enomoto teaches or suggests all of the limitations recited in claim 9. We further find, at this stage, that Petitioner articulates sufficient reasoning with rational underpinning to combine the teachings of Niikawa and Enomoto, and that the combination teaches (directly or indirectly) storing aberration correction algorithms in a database Accordingly, we find Petitioner demonstrates a reasonable likelihood of showing claim 1 is unpatentable as obvious over Niikawa and Enomoto.” slip op. at 57
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,612,805
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.