- PTAB · Jun 11, 2025 · IPR2025-00148 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on both §103 grounds, finding a reasonable likelihood that the claims would have been shown obvious over Doughty and Van Boucq, with or without Maginnis.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown a sufficient motivation to combine. Although Patent Owner is correct in its description of the respective inventions of Doughty and Van Boucq, we do not see how the particular differences of the overall systems matter or would dissuade a POSITA from combining the particular teachings that Petitioner identifies. As Petitioner explains, these references are in same field of endeavor—tracking users for internet advertising, and Petitioner does not propose wholesale incorporation of the system of Van Boucq into Doughty—and therefore qualify as prior art to the ’947 patent and can be combined to show obviousness. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Petitioner proposes using certain teachings from Van Boucq’s system to improve certain aspects of Doughty. Thus, on this record, we find Petitioner has shown an adequate motivation combine and do not find Patent Owner’s arguments diminish that showing.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs against discretionary denial. As discussed above, Factors 2 and 3 weigh heavily against denial. Factors 4 and 6 weigh marginally against denial, Factors 1 is neutral, and Factor 5 weighs against denial. Thus, on balance, the evidence of record weighs against exercising our discretion to deny institution of inter partes review.” slip op. at 47
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,556,947 - PTAB · Jun 5, 2025 · IPR2025-00083 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR on all grounds for claims 1–9; the Board found a reasonable likelihood that claims 1–9 are obvious over Takeda and Yan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Contrary to Patent Owner’s arguments, the Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“early stage, we find that Petitioner has shown sufficiently, for purposes of institution, that the combination of Takeda and Yan teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Takeda and Yan for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s evidence. Based on the record at this preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Takeda and Yan.” slip op. at 27
- Skill levelSkill level petitioner adoptedOther
“had “a bachelor’s degree in electrical engineering, computer engineering, or a related discipline, knowledge of the relevant 3GPP standards” and “at least 2 years of experience working in a field involving wireless communications.” Pet. 10 (citing Ex. 1002 ¶¶ 38–40). Petitioner asserts a “person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. Petitioner also asserts a “person with less than 2 years of experience working in a field involving wireless communications could still qualify if the person has additional education that compensate[s] for their lesser experience.” Id. Patent Owner does not dispute Petitioner’s level of skill at this preliminary juncture. See generally Prelim. Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this early stage, neither party provides an express construction for any claim term and no express construction is necessary to resolve the conflict at this stage of the proceeding. “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)). We, therefore, do not provide an express construction for any term at this preliminary stage in the proceeding. D. Asserted Obviousness of Claims 1–9 over Takeda and Yan” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,638,463 - PTAB · Mar 5, 2025 · IPR2024-01357 · APJ Daniel Kazhdan · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 on all four obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find that this factor marginally favors Petitioners. Fintiv explains that the fact that a “district court has denied a motion for stay without prejudice” and has indicated on the record “that it will consider a renewed motion or reconsider a motion to stay if a PTAB trial is instituted” “has usually weighed against exercising authority to deny institution.” Fintiv, Paper 11 at 6–7. That is what happened here. When the district court denied Petitioner Savant’s motion for a stay in the Ohio litigation, it stated that, “[i]f the Patent Trial and Appeal Board accepts the petition for inter partes review, the parties may rebrief this issue.” See No. 1:24-cv-473 (N.D. Ohio) December 12, 2024, Order. Ex. 1025. Thus, this factor weighs marginally against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“prevail in showing that it would have been obvious to use blue light with a wavelength that is greater than 440 nm. Basin-2007 does not specify a specific wavelength for the blue light, but, as Patent Owner acknowledges, “blue light is generally emitted in the range of 380 to 500 nm.” Prelim. Resp. 55; see Ex. 1002 ¶ 121. Thus, the question is whether a skilled artisan, when looking for which wavelength to use, would have found it obvious to use anything in the half of the blue-light range that is greater than or equal to 440 nm. On its own, this overlap in ranges would be strong evidence of obviousness. See Galderma Lab’ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Petitioners show even more. Basin-2005 discloses that there is an “assum[ption]” that blue-light LEDs emit “in the range of 420-490 nm.” Ex. 1006 ¶ 30 (cited in Pet. 25). Basin-2005 additionally teaches that its “blue, UV, or near UV LED[s]” are “relatively easy to implement and consistently produce[] the desired white light temperature.” Id. ¶ 6 (cited in Pet. 25). Furthermore, Shimizu and Stokes indicate that people were using higher wavelength blue-light in their LEDs. See Pet. 8, 24–25 (citing sources). Because a skilled artisan would have needed to select some wavelength for the blue light disclosed in Basin-2007, at this stage, we conclude that the skilled artisan would have found it obvious to include wavelengths from the higher end of the range—as disclosed in so many references. Basin-2007 discloses using a “conventional white light LED.” See Ex. 1005 ¶ 21. As evidenced by Shimizu and Stokes, the conventional white light LED sources used blue light with wavelengths greater than or equal to 440 nm. See Ex. 1002 ¶ 121 (citing sources). Patent Owner argues that “quantum efficiency” considerations would lead to using lower wavelengths, but Patent Owner does not explain why these same considerations did not convince Basin-2005, Shimizu, or Stokes to use lower wavelengths. Based on our review of the current record, we find that Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art According to Petitioners, [A person of ordinary skill in the art] would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline. A [person of ordinary skill in the art] would also have one to two years of experience in the field of LED packaging design. More education could substitute for experience, and vice versa. Pet. 6. For purposes of institution, “Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 36–37. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioners and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We determine that the plain and ordinary meaning of “light diffusing layer” is exactly what it says: “a layer that diffuses light.” The claims separately recite one function for this layer: it must “improve[] an off-state white appearance of the wavelength conversion component.” Ex. 1001 at 26:15–17; see id. at 27:25–27. That is all.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,604,678 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitutedPTAB · Nov 22, 2024 · IPR2024-00948 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR on claims 1–3, 7–10, 12, 13, and 19 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on the Hanisch-Dunagan combinations with added references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in demonstrating that claim 1 is unpatentable as obvious over Hanisch in view of Dunagan and Hayashi, Meador, or Shin. 5. Claims 2, 3, and 7–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’097 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends that one of ordinary skill in the art “would have had at least a master’s degree in chemical engineering, mechanical engineering, materials science/engineering, or a related field, and three to five years of experience in design and implementation of battery recycling processes.” Pet. 15–16. Patent Owner argues to the contrary that a person of ordinary skill in the art “would have [had] at least a Bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithium-ion batteries.” Prelim. Resp. 13. On the present record, neither party argues that the result would be any different should we adopt a different definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Patent Owner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16 (quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms should be given their plain and ordinary meaning under Philips and do not need further construction for the purposes of this Petition.” Id. Patent Owner argues that “[n]o claim terms require express construction to determine that the Petition does not establish a reasonable likelihood of unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13. Based on the present record, we need not expressly construe any claim terms at this time.6 See 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 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“On the present record, we do not find the relationship between URT and Petitioner to be significant to the degree that raises concerns under Valve and General Plastic. In Valve, two factors affected the determination that there was a significant relationship between the two petitioners at issue: “Valve and HTC were co-defendants in the District Court litigation,” and “the petitions . . . challenge[d] the same claims of the [challenged] patent.” IPR2019-00062, Paper 11, 10. Here, one of these factors is absent, and the other is not entirely present. URT and Petitioner are not co-defendants in the related infringement lawsuit, which accuses only Petitioner. Ex. 2014, 1. As for the claims challenged in the two petitions, Patent Owner is correct that all claims challenged in the present proceeding are also challenged in IPR2024-00887, but the reverse is not true. The petition in IPR2024-00887 challenges claims 15–17 of the ’097 patent, none of which is challenged here. Compare Pet. 3, with IPR2024-00887, Paper 2, 4–5. Thus, there is a significant difference between the present situation and that in Valve.” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to 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). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · Dec 11, 2023 · IPR2023-00996 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR of claims 1–3, 5–8, 10–12, and 18 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2022); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’165 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–3, 5–8, 10–12, and 18) of the ’165 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Summary and conclusion Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition. As discussed above, only factor 5 weighs in favor of discretionary denial, factor 1 is neutral, and factors 2, 3, and 4 weigh, in varying degrees, against discretionary denial of institution, with factors 2 and 3 being the most compelling factors. Given that the trial date has already been delayed to just four months prior to the statutory deadline for a Final Written Decision in this case, and that the current proposed scheduling order pushes significant discovery efforts well into 2024, the evidence of record does not favor exercising our discretion to deny institution of this inter partes review.” slip op. at 49
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner states that it “applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 6. Based on this record, and because there is no dispute, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“Having considered the record before us at this early stage of the proceeding, and because there is no actual dispute as to the meaning of these or apparently any claim terms, we determine that no express claim construction is necessary for any particular claim term. And, like the parties, for purposes of this Decision we adopt, and where appropriate refer to the District Court’s claim constructions in Niantic. Apart from this, on this early record we determine that we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,991,165 - PTAB · Dec 11, 2023 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 3, 5, 7–12, and 23–26 based on both § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’941 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1, 3, 5, 7–12, and 23–26) of the ’941 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“proposed scheduling order, we determine that the second Fintiv factor weighs against discretionary denial of the Petition.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor degree in computer engineering, computer science, or a similar discipline, and/or two years of professional experience in the fields of networking and network-based systems or applications, such as client-server and web-based systems, in the specific context of console and gaming or an equivalent level of skill, knowledge, and experience. A POSITA[4] would have at least a general knowledge of online and in-game advertising methods prevalent in the field, as well as at least a general knowledge of 3D rendering and virtual reality. Pet. 10 (citing Ex. 1004 ¶ 43). Patent Owner states that it “applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 6. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“However, Patent Owner does not provide any express argument for why we should adopt of any of those constructions or demonstrate that any of the constructions would be meaningfully different from the plain and ordinary meaning applied by Petitioner.5 Id. at 6–9. Indeed, we note that the constructions largely repeat the claim language with the clarification that what is claimed is computer software. See id. at 6–7 (setting forth district court constructions). Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,846,941 - PTAB · Dec 11, 2023 · IPR2023-00954 · APJ James J Mayberry · IPR · Institution
The Board instituted inter partes review of claims 1 and 3–9 on all three asserted obviousness grounds, finding a reasonable likelihood that claim 1 is unpatentable over Angles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Litigation has moved the trial date to August 5, 2024, or approximately 4 months before the Final Written Decision is due. See Ex. 3002, 5. This proposed date represents a four-month delay in the trial date as compared to the trial date the parties argued discretionary denial in the Petition and Preliminary Response. In consideration of the above discussion, and particularly the latest proposed scheduling order, we determine that the second Fintiv factor weighs against discretionary denial of the Petition.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer engineering, computer science, or a similar discipline, and/or two years of professional experience in the fields of networking and network-based systems or applications, such as client-server and web-based systems, in the specific context of console and gaming or an equivalent level of skill, knowledge, and experience. Pet. 12. Petitioner adds that a person having ordinary skill in the art “would have at least a general knowledge of online and in-game advertising methods prevalent in the field, as well as at least a general knowledge of 3D rendering and virtual reality.” Id. (referencing Ex. 1004 ¶ 43). Patent Owner “applies Petitioner’s characterization.” Prelim. Resp. 4. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Crane’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner believes that no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Pet. 13. Patent Owner does no raise any claim construction issues. Prelim. Resp. 4. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the record before us. See 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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,458,028 - PTAB · Aug 11, 2023 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 21–30, 36, and 37 on all asserted grounds, finding a reasonable likelihood of success and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’915 patent. We also decline to exercise our discretion to deny institution under § 325(d). Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1, 21–30, 36, and 37) of the ’915 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“[a] two-part framework: (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). Advanced Bionics states that “[p]reviously presented art . . . includes art provided to the Office by an applicant, such as on an Information Disclosure” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “The motivationto-combine analysis is a flexible one.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). And “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference teaches away ‘when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken’ in the claim.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017). “A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” Id. On this record, we are not persuaded that this is a teaching away for several reasons. First, the combination seeks to improve the operation of Armitage by incorporating Barone’s filter, not altering Barone. Thus, it is unclear how this alleged teaching away in Barone would discourage a person of ordinary skill from modifying Armitage. Second, on this record, we understand the statement as expressing a preference, and does not rise to the level of a teaching away. Thus, we are not persuaded that Barone teaches away from the combination. Accordingly, we find, on the current record, that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine Armitage with Barone. slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,137,915 - PTAB · Jul 18, 2023 · IPR2023-00350 · APJ Cynthia L Murphy · IPR · Institution
Review instituted for claims 1–8 on all asserted grounds, based on a reasonable likelihood of success on the Publicover anticipation challenge and the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In Part Two of the Advanced Bionic framework, we determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact the patentability of the challenged claims.” Id. at 8 n.9. Here, the prosecution history of the ’687 Patent reflects that the Office materially erred by overlooking Publicover’s non-illustrated embodiments. As discussed above in Section V, the prosecution history reflects that the different treatment of Application Claim 1 (i.e., rejected as anticipated by Publicover) and Application Claim 11 (i.e., not anticipated by Publicover) seemed to rest on Application Claim 11 requiring the support members to be connected to the barrier net only at or near an upper peripheral part of the barrier (i.e., a top-only connection (c)), while Application Claim 1 did not. As discussed above in Section VI, a claim that did not required a top-only connection (c) could be anticipated by Publicover’s non-illustrated embodiment. And Petitioner demonstrates that when Publicover’s non-illustrated embodiment is taken into consideration, there is a reasonable likelihood that Issued Claim 1 is anticipated by Publicover. Infra § VIII. Thus, we decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that Petitioner demonstrates a reasonable likelihood that it will prevail on its challenge to Issued Claim 1 as anticipated by Publicover. We have reviewed Petitioner’s cited evidence and explanation regarding why Publicover anticipates claims 2–8 and find them sufficient at this stage. At this stage, Patent Owner raises no other arguments regarding these claims other than those considered above with respect to claim 1. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Publicover anticipates claims 2–8.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). “[A] reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“With respect to Ground 2—Obviousness of claims 3 and 4 over Publicover and Coan, Petitioner relies on Coan “[i]f Publicover is determined not to teach ‘so that in their natural rest state the enclosure support members extend away from the mat.” Pet. 40. Patent Owner contends that Coan does not teach this limitation, and because the rigid nature of Coan’s enclosure, Coan teaches away from the combination with Publicover. Prelim. Resp. 50–53. Patent Owner further argues that Petitioner only offers a conclusory motivation to combine the references. Given our conclusion above, we do not resolve this argument, which may have some merit. The parties should address these arguments further during trial.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,854,687
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.