• Cambridge Industries USA, Inc. / Accelight Technologies, Inc. v. Applied Optoelectronics, Inc.No claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-01570 · APJ Monica S Ullagaddi · IPR · Final written decision

  The majority held claims 1–19 not shown unpatentable: Wang did not anticipate claims 1–10, and Wang with Xiong did not render claims 11–19 obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “field of the ’690 Patent would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 14 (citing Ex. 1003 ¶ 22). Petitioner also states that “[i]ndividuals having different educational backgrounds and supplemental experience might still be of ordinary skill in the art if such experience compensates for any deficiencies in education relative to the criteria stated above” and “[i]n some cases, additional education might be an acceptable substitute for some experience, or vice versa.” Id. Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art. See e.g., PO Resp. 9. We adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’690 patent and the prior art of record. 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 neededOther

    “Patent is self-explanatory and would have been recognized by a [person of ordinary skill in the art] as having plain and ordinary meanings.” Pet. 10. “Petitioner submits that no special constructions are required” because “the claim terms appear understandable in the context of the disclosure provided by the specification of the ’690 Patent.” Id. (citing Ex. 1003 ¶ 58). Patent Owner “agrees that the claim terms should be given their plain and ordinary meaning as understood by a [person of ordinary skill in the art].” PO Resp. 10. After reviewing the arguments and evidence before us, we determine that we do not need to expressly construe any claim term to resolve any controversy in the proceeding. 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

  • BurdenNot shown unpatentable

    “Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard. For the foregoing reasons, we are not persuaded that Petitioner sufficiently establishes that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Wang by a preponderance of the evidence.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard.” slip op. at 12

  Patent outcomesUS 10,788,690 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,788,690
• Cambridge Industries USA, Inc. / Accelight Technologies, Inc. v. Applied Optoelectronics, Inc.No claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-00437 · APJ Monica S Ullagaddi · IPR · Final written decision

  The majority held claims 1–19 not unpatentable: Wang did not establish anticipation of claims 1–10, and Wang with Xiong did not establish obviousness of claims 11–19.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard. For the foregoing reasons, we are not persuaded that Petitioner” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “challenge set forth in the Petition by citing the background of the ’690 patent and Dr. Willner’s deposition testimony and characterizing the same as “admissions” of Patent Owner in Petitioner’s Reply, such “evidence” did not form the basis of Appellant’s original position set forth in the Petition.6 Petitioner’s arguments that all of the components recited in claim 11 “were known in the prior art” or that Dr. Willner admitted the same are unpersuasive at least because the Petition did not set forth this position. Contrary to Petitioner’s arguments during the oral hearing, the Petition does not present challenges based on “Applicant Admitted Prior Art.” See generally Pet.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “field of the ’690 Patent would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 14 (citing Ex. 1003 ¶ 22). Petitioner also states that “[i]ndividuals having different educational backgrounds and supplemental experience might still be of ordinary skill in the art if such experience compensates for any deficiencies in education relative to the criteria stated above” and “[i]n some cases, additional education might be an acceptable substitute for some experience, or vice versa.” Id. Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art. See e.g., PO Resp. 9. We adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’690 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  Patent outcomesUS 10,788,690 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,788,690
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01309 · APJ Thu A Dang · IPR · Final written decision

  Claims 19–25 and 27–30 are unpatentable as obvious over Ellis and Spivey; the Board did not find the alternative Herzog, Spivey, and Ellis ground established.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We apply Patent Owner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’697 patent, the asserted prior art, and is supported by the testimony of Dr. Wicker. We note that we would reach the same determination under Petitioner’s formulation of the level of ordinary skill.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “And Patent Owner states that it “agree[s] with Petitioner’s construction” with respect to the MPF terms. PO Resp. 13. Although Patent Owner also contends that a “POSITA would understand the ‘means for transmitting’ to be a socket server transmitting through an event socket that implements the algorithms described in Figures 2, 3, 21A–21E and accompanying disclosures” (id.), Patent Owner’s proposed further construction is not disputed by Petitioner. See generally Pet. Reply. Furthermore, Petitioner’s proposed constructions of “socket” and “event socket” (Pet. 39) are not disputed by Patent Owner. PO Resp. 2, 13–14. In fact, by arguing that Spivey’s topic queues are neither “uniquely addressable” nor “communication endpoint[s],” Patent Owner appears to adopt Petitioner’s proposed construction of “socket” as a “uniquely addressable communication endpoint.” Id. at 2. As Patent Owner acknowledged during Oral Argument, “I don’t think there’s any dispute of what we mean by socket, a uniquely addressable communication endpoint.” Tr. 73:11–13.6 Thus, on this record, because there is no dispute between the parties regarding the terms “means for transmitting,” “event socket,” or “socket,” construction is not needed. Accordingly, we decline to provide further analysis or an express construction for these terms.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “ability for the clients and the server to communicate,” which can be any system that can “provide real-time sports,” but “doesn’t discuss whether it’s a push system or a pull system,” wherein Spivey, on the other hand, “expressly indicates that it is a push type of data system which reduces latency over prior art systems that utilize push technologies.” Tr. 15:13–19. We find availing Petitioner’s contention that, “[a]s explained by Dr. Wicker, . . . a POS[IT]A would have been motivated to implement real-time data delivery using Spivey’s data pushing technique to reduce latency.” Id. at 16:2–4. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. We find unavailing Patent Owner’s contention that Petitioner fails to “articulate why a POSITA would have been motivated to make the necessary modification and proposed combination.” PO Resp. 44. Here, Petitioner points out that its proposed combination would have been made to improve latency issues in Ellis’s system. Pet. 19–24. In particular, Spivey’s discloses that its techniques “may reduce . . . delay [on the order of seconds (e.g., 30 to 45 seconds) or minutes] to an order of milliseconds (ms) (e.g., 100 ms) or less, providing a significant advantage over the conventional practices.” Ex. 1017 ¶ 28. Spivey also discloses pushing data to the “subscribed connected client devices” substantially simultaneously with the message queue server receiving the topic entry from a live data source, e.g., “with a time delay of 100 milliseconds or less,” which Spivey discloses is “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. ¶ 96; see also id. at code (57) (disclosing pushing “the topic entry to a subscribed client device substantially simultaneously with the message queue server receiving the topic entry from a live data source”).” slip op. at 51

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “demonstrated that a long-felt but unresolved need existed for the claimed invention. See Apple v. Samsung, 839 F.3d at 1056. As Petitioner points out, although Patent Owner argues that there is a long-felt need for a system that “allows broadcasters to deliver synchronized, low-latency video and audio content. . . . ” (PO Resp. 66), Patent Owner does not contest Petitioner’s showing that Ellis also discloses “a video streaming system that provided event information over a separate channel, which is not hard embedded in the video stream.” Pet. Reply 22–23. Further, as Petitioner also points out, “claim 19 simply requires a media source to receive the live stream of digital content and distribute it.” Pet. Reply 23. In fact, during Oral Argument, although Patent Owner argues that its invention is “the synchronization and the latency improvements through that one-to-many socket architecture,” Patent Owner conceded that the claims “could be broader than that.” Tr. 44:24–46:16. We find availing Petitioner’s argument that the “claim language” does not “relate to any synchronized, low-latency, scalable, flexible, or new and improved video streaming technique.” Pet. Reply 23. Nevertheless, as Petitioner points out, Patent Owner does not cite to any evidence as to any long-felt but unresolved needs. Pet. Reply 23 (citing PO Resp. 67–68). In particular, Patent Owner merely provides conclusory statements that, prior to the claimed invention, “conventional video streaming systems” include “hard-embedded event information,” and that “[t]he claimed invention satisfied the long-felt need for an innovative system.” PO Resp. 66–68. Thus, considering the totality of the evidence, we agree with Petitioner that Patent Owner has failed to establish that there was a long-felt but unresolved need for the claimed invention.” slip op. at 59

  Patent outcomesUS 10,425,697 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,425,697
• Aylo Freesites Ltd v. DISH Technologies L.L.C.Some claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-00940 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Leaning and over Leaning with Klemets; claims 12–20 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner does not address the level of ordinary skill in the art in its post-institution papers. We adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We determine that no construction of “virtual timeline” is necessary. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Rather, as discussed below, the parties’ dispute appears to be about whether the “virtual timeline” identified by Petitioner is used to arrange the requested streamlets, as is also recited in claim 9. We address that argument below. See infra § II.D.10.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “On this record, we determine that the recitation “to achieve continuous presentation” is limiting and requires an amount of continuous (uninterrupted) playback/presentation after an upshift or downshift. The specification describes agent controller 702 determining whether to upshift based on a trigger threshold Θup, which itself is based on various factors including a current read ahead margin and a minimum safety margin. See Ex. 1001, 17:44–58. If agent controller 702 can sustain upshift quality, then it will upshift and request higher quality streams. See id. at 17:58–61. Conversely, when an upshift is not possible, agent controller 702 determines whether to downshift based a different threshold Θdown, which itself is based on the same sort of factors. See id. at 18:4–7. When the stream quality is not adequate, it downshifts. See id. at 18:7–14. These disclosures are similar to the language of claim 12, which recites “repeatedly generating a factor indicative of a current ability to receive the digital content at a rate sufficient for presenting the digital content as the digital content is received, . . . wherein the factor relates to a performance of the network” and “making the successive determinations whether to change the requested bit rate based on the factor to achieve continuous presentation of the digital content using the individually-requestable portions of the highest bit rate one of the copies determined receivable at that time.” Ex. 1001, 20:5–16 (emphasis added). That is, claim 12 refers to “achiev[ing] continuous presentation” based on what is “sufficient for presenting the digital content,” trading quality to ensure continuous playback.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “server comprises at least two servers and wherein at least one streamlet is requested from a first of the at least one server and at least one other streamlet is requested from a second server of the at least one server other than the first server.” Ex. 1001, 19:7–12. Petitioner references its mapping of the “at least one server” in claim 1 to Leaning’s server 1. Pet. 20 (citing Ex. 1004, 2:15–16, 2:18–22, 2:31–32, 5:8–14, Fig. 1), 23 (citing Ex. 1004, 6:13–26, 9:3–7, 16:6–12), 37; see supra §§ II.D.2.b–c. Petitioner contends that, “[t]o the extent Leaning does not disclose at least two servers wherein one sub-file (streamlet) is requested from a first server and another sub-file (streamlet) is requested from a second server such an arrangement would have been obvious in view of the knowledge of a [an ordinarily skilled artisan].” Id. at 37. Citing the common nature of such an arrangement, Petitioner contends that an ordinarily skilled artisan would have been motivated to provide multiple web servers containing the same sets of sub-files for streams in order to have redundancy in the system and allow for clients to establish connections with multiple servers and request a first sub-file from a first web server and, if the connection between the first web server becomes congested or the first web server otherwise fails or becomes unavailable, request a subsequent sub-file from the second web server. Id. at 37–38 (citing Ex. 1003 ¶ 85; Ex. 1012, 108,5 Fig. 4-11). Patent Owner does not dispute Petitioner’s analysis for claim 3. We are persuaded that it would have been obvious to implement Leaning’s server 1 as two servers that store different streamlets based on Dr. Houh’s uncontested testimony about system redundancy. See Ex. 1003 ¶ 85. His testimony is backed by a contemporaneous reference about HTTP that shows requests for different objects from different servers over parallel TCP connections. See, e.g., Ex. 1012, 108–09, Fig. 4-11. Thus, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 3 would have been obvious over Leaning.” slip op. at 34

  Patent outcomesUS 11,991,234 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,991,234
• Oneplus Technology (Shenzhen) Co., Ltd. v. Pantech CorporationInstituted
  PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution

  The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §103 grounds, finding a reasonable likelihood of unpatentability over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Ericsson and TS 25.331.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. At this stage in the proceeding, 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 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,764,803
• Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Jun 17, 2025 · IPR2024-01334 · APJ David C Mckone · IPR · Final written decision

  Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Id. at 6:18–26. Petitioner argues that “an ATM is not a party to a transaction—the parties are the user and the bank, and the ATM is the mechanism through which the bank’s accounts are accessed.” Reply 5–6 (citing Ex. 1026 ¶ 13). Similarly, Petitioner argues, a file “is not a principal party to a transaction—rather the user and the provider of the file (e.g., a vendor) are the parties.” Id. at 6 (citing Ex. 1026 ¶ 13). Petitioner makes similar arguments for financial accounts, savings accounts, medical records, and insurance information. Id. (citing Ex. 1001, 6:18–26; Ex. 1026 ¶ 14). We agree with Petitioner. The specification, here, gives several examples where the application being accessed is not, itself, a party to the transaction, but rather an asset of one of the parties or the mechanism by which the parties transact.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term ‘access message’ to mean ‘a signal or notification enabling or announcing access.’” PO Resp. 7. However, Patent Owner argues that applying “access message” to Ludtke’s transaction confirmation “fails to account for the claim term ‘access to an application.’” Id. at 7–8. Rather, Patent Owner argues, a transaction confirmation “is a message announcing that a transaction has been completed.” Id. at 8. Patent Owner contends that “[t]he plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object wherein the object is the claimed application.” Id. (citing access, MERRIAM-WEBSTER DICTIONARY (available at https://www.merriam-webster.com/dictionary/access)). Here, Patent Owner appears to retreat on its agreement that “access message” can include a signal “announcing” access, and suggests that we limit “access message” to a signal “enabling” access. However, Patent Owner then returns to its agreement, stating that “[i]t would be improper to construe ‘access message’ as something other than a signal or notification enabling or announcing a user’s access to (ability to enter, communicate with, or make use of) an application.” Id.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “As explained above, a person of ordinary skill in the art would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent, while additional education could substitute for professional experience, and significant work experience could substitute for formal education. Mr. Carrothers claims to be “a financial services and retail leader with approximately thirty years of experience working in a variety of leadership roles in retail payments.” Ex. 2018 ¶ 1. He lists professional and consulting experience with retail payments, operational and risk management of a credit card portfolio, and payment insurance and acceptances in stores and online. Id. ¶¶ 1–5. His Curriculum Vitae (Ex. 2018, Appendix A) lists education including a Bachelor of Business Administration and a Master of Business has either the technical education or the technical experience to be a person of ordinary skill in the art. In response to Petitioner’s challenge to Mr. Carrothers’ qualifications, Patent Owner does not contend that Mr. Carrothers is at least a person of ordinary skill in the art.7 Rather, Patent Owner argues that “[t]o put the asserted portions of Ludtke in context, Mr. Carrothers provided testimony regarding the processing of credit and debit card payments with respect to online transactions based on his expertise and experience with retail payments.” Sur-reply 1. Patent Owner uses Mr. Carrothers’ testimony to support arguments regarding the timing and parties to the communications generated by Ludtke’s system, and to support arguments that the TPCH is a party to Ludtke’s transactions. PO Resp. 13–17 (citing Ex. 2018 ¶¶ 20–31). We find that Mr. Carrothers testifies on technical details regarding unpatentability, and that a declarant testifying as to such subject matter should have at least ordinary skill in the art. Thus, Mr. Carrothers’ testimony is entitled to no weight. See Kyocera, 22 F.4th at 1376–77.” slip op. at 39

  Patent outcomesUS 8,886,954 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,886,954
• T-Mobile USA, Inc. / AT&T Services, Inc. et al. v. Headwater Partners II LLCInstituted
  PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution

  Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When 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). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,094,868
• Digital Global Systems, Inc. v. Deepsig Inc.Institution denied
  PTAB · Mar 27, 2025 · IPR2025-00049 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may not be instituted unless “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). Here, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with . . . radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “B. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the 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). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 9–10. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “On this record, we agree with Patent Owner. Claim 1 recites “generating a pre-distorted radio signal by processing the transmit radio signal using a nonlinear pre-distortion machine learning model.” Ex. 1001, 14:19–24. This portion of claim 1 requires processing a transmit signal using a machine learning model. Id. Claim 1 also recites “updating the model parameters based on a distance metric computed between the transmit radio signal and a received signal that is obtained from the one or more radio receivers.” Id. at 14:30–35. This portion of claim 1 requires updating model parameters based on a distance metric computed using a received signal obtained from a receiver. Id. Thus, together, these portions of claim 1 require updating parameters for a transmit model based on a distance metric computed using a signal obtained from a receiver.” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 10,581,469
• Samsung Electronics Co., Ltd. v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Mar 24, 2025 · IPR2024-01349 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution because claims 1–13 are entitled to the May 26, 2005 priority date, making the asserted references not prior art and the obviousness grounds unlikely to prevail.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Thus, if Petitioner has not satisfied the threshold reasonable likelihood standard for institution, then institution will be denied. See id. at 1378–1379.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application.” (emphasis added). “In essence, this means that in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.” Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008). And to determine whether a parent application meets the written description requirement, “the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it, to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Labs. Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted); see also Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345–46 (Fed. Cir. 2000) (the purpose of the written description requirement “is to ensure that the scope of the right to exclude . . . does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification”).” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) if presented, objective evidence of non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As previously noted, the first factor regarding the scope of available prior art is the dispositive issue of this Petition, which is largely defined by the effective filing date of the challenged claims.” slip op. at 8

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “Because we determine that no inter partes review will be instituted on IPR2024-01350, we find it unnecessary to exercise exclusive jurisdiction over the ’849 patent. See Paper 9, 9. Therefore, Petitioner’s motion for the Board to exercise exclusive jurisdiction over the ’849 patent is denied. Petitioner further requests that all briefing in this proceeding be provided to the Certificates of Correction and Petitions branches for their consideration, citing Patent Owner’s “duties of candor and good faith.” Id. at 2, 10. However, in view of our determination not to institute review in this proceeding, we defer to the Certificates of Correction and Petitions branches to carry out their duly authorized duties. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019).” slip op. at 23

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,719,849
• Samsung Electronics Co., Ltd v. Anonymous Media Research Holdings, LLCInstitution denied
  PTAB · Mar 21, 2025 · IPR2024-01350 · APJ Michael T Cygan · IPR · Institution

  Institution was denied for claims 1–15 because Petitioner did not show the asserted references were prior art; the claims were supported by the ’330 application’s 2005 filing date.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To prevail on its obviousness challenges, Petitioner must show that the ’848 patent is not entitled to the benefit of the ’330 application. This issue is dispositive because none of the references relied on by Petitioner qualify as prior art if the ’848 patent is entitled to the benefit of the May 26, 2005, filing date of the ’330 application. Pet. 6, 13. We start by explaining why Petitioner bears the burden of persuasion.” slip op. at 9

  • BurdenDecided for patent owner

    “1. The Burden of Persuasion “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). That burden, termed the burden of persuasion, “is the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). That burden never shifts to the patentee. Id. at 1379. In order for an inter partes review to be instituted, “the information presented in the petition filed under section 311 and any response filed under section 313 [must] show[] that there is a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “d) Analysis Petitioner has not shown a reasonable likelihood that it would prevail in showing that its asserted references, including Steuer 750 which is a publication of the ’330 application, are prior art to the ’848 patent. Petitioner has not shown that the ’330 application fails to provide written description support for claim 1 of the ’848 patent, which recites “video data” samples and representations.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “a chain of priority from the ’330 application to the ’848 patent contain at least the same disclosure as the ’330 application, Petitioner has not shown that the ’848 patent should not be given the benefit of the effective filing date of the ’330 application. The May 26, 2005 filing date of the ’330 application predates the December 1, 2005 publication date of Steuer 750, the August 13, 2013 issue date of Steuer 768, and the December 2, 2010 and May 27, 2010 publication and filing dates of Neumeier.10 Pet. 7; Ex. 1005, code (43); Ex. 1006, code (45); Ex. 1007, codes (43), (60).11 Therefore, Petitioner has not shown by a preponderance of the evidence that any of the asserted claims in the ’848 patent would have been obvious over the asserted combinations of Steuer 750, Steuer 768, and Neumeier.” slip op. at 22

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,719,848

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.