- Google LLC v. Wildseed Mobile, LLCNo claims unpatentablePTAB · Sep 1, 2026 · IPR2023-00247 · APJ Michael T Cygan · IPR · Remand
Claim 15 was not shown unpatentable over Rothschild alone or Rothschild and Chen because Petitioner did not sufficiently explain or support how the IM modality generates the claimed hot link.
RulingsRemand decision- BurdenNot shown unpatentable
“disclaim HTML-formatted advertisements in IM,” and that there is no evidence or expert testimony that IM messages are incompatible with HTML tags. Pet. Remand Reply 4–7 (also stating, “nor did Patent Owner contest the Petition’s showing with respect to the IM limitation of claim 15”). However, in inter partes review, the burden is on Petitioner to explain and support its assertions; it is not on Patent Owner to prove that its claims are not unpatentable. In re Magnum Oil Tools, 829 F.3d at 1375; PO Remand Resp. 5. Petitioner must explain how Rothschild teaches generating a hot link message, in an instant message communication, that includes the determined action and instructions for rendering and displaying the hot link. Petitioner’s reliance on a list of communication types is insufficient because although personal communications are sent “with” an advertisement, not all members of that list (e.g., SMS) generate a hot link message having the claimed instructions in the manner (formatting) asserted by Petitioner. Ex. 1005, 8:3–6; Ex. 2009 ¶ 64.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“link message by IM is that Rothschild states that “a personal communication can include, but is not limited to, an e-mail message, text message, short message service (SMS) message, chat-room message, instant messaging message, video message, voice message, and any other personalized network communications.” Pet. 40 (quoting Ex. 1005, 8:6–11); Pet. Remand Reply 2, 5–6 (arguing that this is unrebutted by Patent Owner). Such an explanation would be sufficient if each of those communications were shown to work in the same manner as email, such that no further explanation would be required to show that one having ordinary skill in the art would understand how Petitioner’s email and HTML tag explanations applied to each of the other message types. formatting step, which is required under Petitioner’s assertions for limitation [10.7]. Ex. 2009 ¶¶57 (citing Ex. 1005, Fig. 10), 60 (citing Ex. 1005, Fig. 11), 64 (“[t]here is no formatting step for the SMS message, only for e-mail.”), 76 (“SMS messages . . . do not use HTML”); PO Sur-reply 27. Nor does Petitioner assert or explain that IM messages are formatted so as to teach the generating step of limitation [1.4]/[10.7]. Pet. 32 (“Rothschild’s server generates a hot link message when the web server formats the message data into an e-mail that contains the selected interactive advertisement.”). Because Petitioner’s “generating a hot link” assertions rely on the use of HTML (in email), and one of Rothschild’s listed communication types (SMS) does not use HTML, Petitioner fails to show persuasively that an artisan of ordinary skill would have interpreted each of Rothschild’s other listed types of personal communication as using HTML to generate a hot link in the claimed manner.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Although Dr. Houh testifies that the use of IM would have been obvious, this testimony is a verbatim copy of what the Petition says on claim 5. Compare Ex. 1003 ¶¶ 80–81, 130–31 with Pet. 41. Dr. Houh cites to Rothschild’s list of communication types, but provides no analysis or reasoning or further evidence for his obviousness conclusion in the Houh Declaration. As such, it is a bare conclusory statement entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinions is based is entitled to little or no weight.”). We further note that although Dr. Houh relies upon Rothschild’s “interactive advertisement that is displayed with a graphic and includes an embedded URL,” Dr. Houh does not explain how each of the listed communication types (which include a voice message), or IM specifically, have these properties. Ex. 1003 ¶ 58.” slip op. at 11
Patent outcomesUS 10,869,169 not shown unpatentable§ 103 obviousnessPatents in suitUS 10,869,169 - Duration Media LLC v. Rich Media Club LLCAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Remand
On remand, the Board held claims 1–10 unpatentable as obvious over Krassner, Badros, and Harkins; it did not reach the alternative Badros and Harkins ground.
RulingsRemand decision- RemandOther
“On August 16, 2024, Petitioner filed a Request for Director Review of the Final Written Decision. Paper 73 (“Req.”). Patent Owner opposed the Request. Paper 77. On December 12, 2024, Director Vidal granted the Request and entered a Director Decision. Paper 78 (“Director Dec.”). The Director Decision states that “Petitioner persuasively shows that Badros discloses the viewability test.” Director Dec. 9. Accordingly, the Director Decision vacated the Previous FWD, and remanded back to us for further proceedings. Id. at 13. We have jurisdiction under 35 U.S.C. § 6 and pursuant to the Director’s Decision. For the reasons discussed below, we determine that Petitioner has met its burden to prove, by a preponderance of the evidence, that claims 1–10 of the ’329 patent are unpatentable.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience in computer programming with at least one year of said experience being in the field of internet advertising.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artReference not prior artDecided for patent owner
“Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“subject matter [sought to be patented] pertains,’ this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is ‘too remote to be treated as prior art.’” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). “Whether a reference in the prior art is ‘analogous’ is a determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59.” slip op. at 19
Patent outcomesUS 11,443,329 unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - PTAB · Mar 17, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Remand
On remand, the Board declined Fintiv denial and instituted review of claims 1–20 on all seven asserted obviousness grounds, finding a compelling challenge to claim 1 under Ground 1.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“denial, and Fintiv Factor 1 is neutral. Collectively, the first five Fintiv Factors favor discretionary denial.” slip op. at 60
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner will prevail in its challenge to claim 1 under Ground 1. Thus, Petitioner has set forth a compelling, meritorious challenge that plainly leads to the conclusion that at least one claim is unpatentable (based on the current record).” slip op. at 74
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted do not include underlying data that is transmitted. In isolation, the phrase “not including underlying data that is being transmitted” could be subject to different interpretations. It could simply mean that data being transmitted by itself is not a radio resource, but the RF carrier transmitting the data could be a radio resource. Patent Owner makes clear, however, that this interpretation is not the intent of its construction by arguing that, under its construction, Hettstedt’s RF carriers are not radio resources because they have data modulated on them. Prelim. Resp. 24–27. Similarly, Patent Owner argues that Wu’s carriers are not radio resources because they have payload data encapsulated in them. Id. at 34; see also id. at 35. Patent Owner, however, cites nothing from the Specification that indicates RF carriers, CDMA codes, or TDMA time slots cease to be radio resources merely because data is modulated or encapsulated on them. Prelim. Resp. 12–18. Further, we see no such teaching in the Specification.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic) as a threshold-based trigger avoids the need for the system to wait for user inputs. Ex. 1003 ¶ 130. Further, an ordinarily skilled artisan would naturally use a threshold for the trigger as taught by Wellington because a threshold is readily programmable and machine executable. Id. In addition, an ordinarily skilled artisan would have been motivated to implement Wellington’s teaching to improve the adaptability of Hettstedt’s system. Id. A benefit of a threshold-based trigger is that it allows a system to fine-tune the load balancing by adjusting the threshold. Id. Further, there is no need to reprogram significant software when using a threshold-based trigger. Id.” slip op. at 72
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,026,232 - Apple Inc. v. Personalized Media Communications LLCSome claims unpatentablePTAB · Sep 8, 2022 · IPR2016-01520 · APJ Kevin F Turner · IPR · Remand
On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable, and the contingent motions to amend remained denied.
RulingsRemand decision- RemandOther
“CONCLUSION After reviewing the record developed during trial anew and taking into account the Federal Circuit’s decision, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of the ’635 Patent are unpatentable, and that Petitioner has not demonstrated by a preponderance of the evidence that claim 3 of the ’635 Patent is unpatentable.” slip op. at 103
- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“in the art would have understood “encrypted video” recited in claim 4 to exclude teletext and would recognize “video” to be distinct from static text and images. 754-PO Resp. 19. Petitioner counters that “video” is any information that is visually perceivable including the display of static pictures. 754-Pet. Reply 5 (citing IPR2016-00754, Ex. 2028, 10–12; IPR2016-00754, Ex. 1003, 278:21–24, 258:16–19, 13:38–52, 188:17–18, 249:53–56). During oral argument, Petitioner argued that a single image can qualify as video. IPR2016-00754, Paper 40, 14:24–25 (“JUDGE WARD: So one image qualifies as video. MR. SERNEL: I think arguably it would.”). We do not agree with Petitioner’s position that the display of a static image constitutes “video”; otherwise, there would be no difference in an image and video. We determine that video requires moving visuals. In its Preliminary Response, Patent Owner stated that video shows movement and changes within an image. IPR2016-00754, Paper 7, 60 (citing IPR2016- 00754, Ex. 2001 ¶ 122). Petitioner’s Declarant Mr. Wechselberger seems to agree as he describes that “[s]uccessive frames of text and/or graphics presented on the display means 20 constitutes video.” IPR2016-00754, Ex. 1001 ¶ 141. We determine that the construction of the term “video” recited in claim 4 of the ’635 Patent means “visually perceivable non-static imagery.”” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“teletext in accordance with its well-known capabilities as part of a television program. IPR2016-00754, Ex. 1001 ¶ 201. As the Supreme Court instructed in KSR, it is proper to “consider the inferences and creative steps a person of ordinary skill in the art would employ.” 550 U.S. at 401. Based on the foregoing, we determine Petitioner has provided a sufficient rationale for the modification of Guillou. Id. at 418. Accordingly, we determine the record supports Petitioner’s proposed modification of Guillou such that the encrypted materials comprise a portion of a television program, and we adopt Petitioner’s contentions as our own.” slip op. at 57
Patent outcomesUS 8,559,635 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,559,635 - Apple Inc. v. Personalized Media Communications LLCSome claims unpatentablePTAB · Sep 8, 2022 · IPR2016-00754 · APJ Kevin F Turner · IPR · Remand
On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable.
RulingsRemand decision- RemandOther
“D. Scope of Consideration on Remand Per the briefing on remand, Petitioner asserts that the above-discussed” slip op. at 11
- Adverse judgmentAdverse judgmentOther
“1 Patent Owner subsequently disclaimed claims 1 and 2 of the ’635 Patent (IPR2016-00754, Ex. 3001), such that we need not consider those claims with respect to the instituted grounds. 2 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”). 3 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Aminetzah”). 4 US Patent No. 3,743,767, filed Oct. 4, 1971 (Ex. 1009) (“Bitzer”). 5 Under Board practice at the time, not all grounds and claims proffered in the Petition were instituted.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“L. Contingent Motions to Amend As discussed above, Patent Owner also filed a Contingent Motion to Amend in each proceeding (IPR2016-00754, Paper 15; IPR2016-01520, Paper 16). In respective Final Written Decisions (754-FWD, 1520-FWD), we denied both contingent motions to amend. See 754-FWD, 64–71; 1520- FWD, 55–66. As neither the Federal Circuit decision in PMC, nor the Order Granting Request for Director Review, addressed the contingent motions to amend, we incorporate-by-reference our prior analyses and continue to deny those motions, save consideration of one claim, discussed below. In both Final Written Decisions, we were not persuaded that Patent Owner had demonstrated that the substitute claims had proper written description support, with the exception of one claim in each Motion to Amend, where those latter, substituted claims were not shown to be patentable over the prior art of record. See 754-FWD, 64–71; 1520-FWD, 55–66. With respect to IPR2016-01520, substitute claim 41, a proposed substitute for challenged claim 3, was shown to have proper written description support. 1520-FWD, 62–63. As discussed above, however, claim 3 has not been demonstrated to be unpatentable, such that proposed, substitute claim 41 need not be considered, based on the contingencies specified in the Contingent Motion to Amend. IPR2016-01520, Paper 16.” slip op. at 101
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner’s Declarant, Mr. Wechselberger, a person of” slip op. at 15
Patent outcomesUS 8,559,635 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,559,635 - Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498
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.