- Google LLC v. Eyesmatch Ltd.Some claims unpatentablePTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23
Patent outcomesUS 8,982,110 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentablePTAB · Nov 4, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the prior art did not establish the claimed distance-based variation in the rate of image-processing steps.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach 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 by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
Patent outcomesUS 8,982,109 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,109 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentablePTAB · Nov 4, 2025 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the cited combinations did not teach or suggest varying the rate of the claimed image-processing steps according to user distance.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 14 (citing Forsyth Decl. ¶¶ 62– 63). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.7” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach 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 by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We find that Petitioner has not demonstrated by a preponderance of evidence that step 1(h) is taught or suggested by the references cited by Petitioner or the testimony of Petitioner’s expert, Dr. Karam. We agree, instead, with Patent Owner’s argument that “a [person of ordinary skill] would regard the disclosures in Rosenberg relating to proximity detection to be in connection with turning on or off various display modes and not in connection with varying the rate of one or more steps that are performed to transform a series of captured images of a user.” PO Resp. 33 (citing Ex.1005, ¶¶ 25, 32, 56, 69, 114). This distinction was explored during the final hearing. Petitioner’s counsel confirmed that in Rosenberg’s mirror mode, the rate of performing the processing steps does not vary: [THE BOARD]: It’s true that when the -- when Rosenberg is acting in the mirror mode, it’s always at the same rate, correct? It’s always performing those three processing steps at the same rate? [COUNSEL]: Correct. Hearing Tr. 34:13–16. We conclude that Rosenberg fails to disclose or suggest step 1(h) for the reasons given by Patent Owner and summarized above. We agree with Patent Owner’s analysis that in Rosenberg, when the mirror is off the processing steps are not performed, and when the mirror is on, the steps are performed “at an invariant rate.” PO Sur-reply 18–19.” slip op. at 33
Patent outcomesUS 8,982,109 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,109 - 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 - Google LLC v. Security First Innovations, LLCAll claims unpatentablePTAB · May 16, 2025 · IPR2024-00215 · APJ Jason M Repko · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Foster and Hayhurst; the Board did not reach the anticipation and obviousness grounds based on Orsini.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 1003 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Patent Owner submitted the Declaration of Dr. Rubin in support of its Response, and in that Declaration, Dr. Rubin accepted Petitioner’s definition. Ex. 2033 ¶¶ 20–21. For the reasons given, we apply the same level of ordinary skill in the art that we did in the Institution Decision. Inst. Dec. 4.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“See Section II.C.3.a.ii supra. Although Dr. Rubin calls Hayhurst’s security benefits “ancillary” (Ex. 2033 ¶¶ 108–109, quoted in PO Resp. 40), this does not align with Hayhurst (see Ex. 1007 ¶¶ 2, 7, 8, 21). For example, Hayhurst describes the security measures in the Technical Field section (id. ¶ 2) and the Summary of the Invention section (id. ¶¶ 7, 8). Hayhurst also discusses piracy deterrence in both the Summary of the Invention section (id. ¶ 8) and the invention’s detailed description (id. ¶ 21). Because Dr. Rubin does not give sufficient weight to Hayhurst’s discussion of piracy deterrence and security, we do not credit Dr. Rubin’s testimony on this issue. See Ex. 2033 ¶¶ 108–109. Thus, we agree with Petitioner that Hayhurst is reasonably pertinent to the network-security problem that the inventors were trying to solve. See Reply 5–6.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party explicitly proposed constructions during trial, and we do not see the need for construing any terms in this Decision.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“3. Claim 1 a. Analogous Art “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Lab. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (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 pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland Gmbh v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted)).” slip op. at 9
Patent outcomesUS 10,452,854 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,452,854 - PTAB · May 14, 2025 · IPR2025-00021 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court proceeding to the Northern District of California (Ex[.] 1036[,] 8).” Pet. 73. However, on March 25, 2025, the District Court denied the motion to transfer. Ex. 2026. Thus, we find that factor 2 weighs in favor of exercising discretion.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree with Patent Owner on this record. The language of claim 1 recites “location access rights of said device from said first wireless device.” The claim language does not limit the location access rights to be of only the one other device, at the exclusion of other devices. The ordinary and customary meaning of “location access rights of said device from said first wireless device” encompasses rights that allow other devices, in addition to the recited device, to access location information. The disclosure in the written description is consistent with the ordinary and customary meaning. Although the written description states that an object of the invention is to provide a security feature which allows a user to limit or deny access to a particular user, the written description discusses other purposes served by the assignment of access rights. For example, the written description discloses that “[u]sers may be added, individually or in groups, to a list of users with location access rights to a specific user by that specific user. A specific user may, at any time, modify, delete, or add users allowed to access his or her location.” Ex. 1001, 3:22- 26. The written description further discloses that “a user may organize his/her user list into groups and assign access rights to that group (e.g., family member user group, close friend user group).” Id. at 13:9–12. The fact that the written description of the ’039 patent sets forth multiple objectives to be served by the access rights confirms that these terms should not be construed as limited to a single device. Phillips, 415 F.3d at 1327. Further, because the written description here includes an embodiment where a user assigns access rights to a group, we are persuaded that the scope of the disputed claim terms encompasses a group permission. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). At this stage, we interpret the scope of the “location access rights of said device from said first wireless device” to encompass at least the disclosed embodiment of assigning access rights to a group. Ex. 1001, 13:9– 12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have made Petitioner’s proposed combination of “Degnbol’s disclosure of both selection of location-based events and manual entry using the handset of the phone with Sheha, to improve user ease, given that such techniques were well-known and conventional to POSAs at the time of alleged invention.” Pet. 18 (citing Ex. 1003 ¶ 132). Degnbol describes that “[i]t is an advantage of the present invention that user ‘A’ can be alerted when user ‘B’ arrives or leaves the defined location(s) or area(s)” so as “to enable user ‘A’ to know in advance the proximity or approximate whereabouts of user ‘B’ before possibly acting upon this information by contacting user ‘B’ — or allowing ‘B’ to contact ‘A.’” Ex. 1035, 3:23–27. At this preliminary stage, we find that Petitioner provides sufficient rationale to combine the teachings of Sheha, Degnbol, and McNulty for purposes of institution. Based on the evidence and arguments currently of record, we find that Petitioner demonstrates sufficiently for purposes of institution that the Sheha, Degnbol, and McNulty combination teaches the features recited in claim elements [1D] through [1F] and Petitioner provides sufficient rationale to make its proposed combination. We find that Patent Owner’s arguments do not undermine Petitioner’s showing. c) Conclusion—Claim 1 After consideration of the arguments and the evidence of record at this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that the combination of Sheha, Degnbol, and McNulty teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Sheha, Degnbol, and McNulty for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s showing. Based on the record at this preliminary stage, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Sheha, Degnbol, and McNulty.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,096,039 - PTAB · May 12, 2025 · IPR2025-00124 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–46 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“WITHOUT PREJUDICE to refiling of the same within fourteen (14) days following the PTAB’s institution decision on the last of the pending IPRs” (Ex. 2008, 3), we decline to speculate whether the district court will grant a stay. Thus, we find that factor 1 is neutral. slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the arguments and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’575 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’575 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar degree, with one or two years of experience with wireless networks and devices, such as cellphones and personal digital assistants (‘PDAs’), as well as wireless positioning technologies, such as GPS or triangulation,” and that “[m]ore education could compensate for less practical experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 50–54). At this stage of the proceeding, Patent Owner does not challenge the level of ordinary skill in the art proposed by Petitioner’s expert. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’575 patent specification and the prior art.5” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner on this record. The language of claim 1, quoted above, recites “changing, at the direction of said first wireless telephone, a list of users on said remote server for a profile associated with said first wireless telephone that are allowed to access said location, wherein each user of said list of users is representative of one of a plurality of wireless telephones.” Ex. 1001, 12:65–13:3. The recitation of “said location” derives antecedent basis from element [1A], which recites “obtaining a location of a first wireless telephone,” thus “said location” in element [1C] is the location of the first wireless telephone. Id. at 12:62.7 The claim language does not limit access to the location of the first telephone to one other device, at the exclusion of other devices. Indeed, the claim language specifically recites that “a list of users” are changed “for a profile associated with said first wireless telephone” and that “each user of said list of users is representative of one of a plurality of wireless telephones.” Ex. 1001, 12:65– 13:3 (emphases added). The ordinary and customary meaning of “changing, at the direction of said first wireless telephone, a list of users on said remote server for a profile associated with said first wireless telephone that are allowed to access” to the location of the first wireless device “wherein each user of said list of users is representative of one of a plurality of wireless telephones” (Ex. 1001, 12:65–13:3) encompasses allowing “a list of users,” each having a telephone, access to the location of the “first wireless telephone” and further encompasses allowing other telephones, in addition to the recited plurality of wireless telephones access to the location of the first wireless telephone.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,374,575 - PTAB · Apr 25, 2025 · IPR2025-00036 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of IPR challenging claims 1–18, exercising § 314(a) discretion under Fintiv because the parallel district court case favored efficient and timely resolution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We are not swayed by Petitioner’s speculation as to the trial date for the parallel district court proceeding as well as arguments regarding trial dates for the other two district court proceedings. Due to the actual trial date of the parallel district court proceeding having been set to occur more than seven months before an expected final written decision in this proceeding, as well as a projected trial date based on time-to-trial statistics of more than six months before an expected final written decision, we determine that the considerations of the second Fintiv factor weigh in favor of exercising discretion to deny institution of inter partes review.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“factors. Because the analysis is fact-driven and we take a holistic view of the factors, no single factor is determinative of whether we exercise discretion to deny institution under § 314(a). The parallel district court trial date set more than six months before an expected final written decision and the significant investment by the court and parties in the parallel district court proceeding weigh in favor of exercising discretion to deny institution of inter partes review. Petitioner’s stipulation, however, allays to some extent concerns regarding duplication of efforts and the possibility of conflicting decisions and weighs against exercising discretion to deny institution of inter partes review. Of the remaining factors, we find only that Petitioner and defendant being the same to weigh in favor exercising discretion to deny institution of inter partes review. After careful consideration and holistically balancing all of the considerations of the Fintiv factors, on this record, we determine that the evidence before us warrants exercising discretion to deny institution of inter partes review. III. CONCLUSION We exercise discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18
Discretionary denialPatents in suitUS 11,627,631 - PTAB · Apr 25, 2025 · IPR2025-00037 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution of inter partes review of claims 1, 2, 4, 8, 9, and 11, exercising discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parallel district court proceeding as well as arguments regarding potential trial dates for the other two district court proceedings. Due to the actual trial date of the parallel district court proceeding having been set to occur more than seven months before an expected final written decision in this proceeding, as well as a projected trial date based on time-to-trial statistics of more than six months before an expected final written decision, we determine that the considerations of the second Fintiv factor weigh in favor of exercising discretion to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“Accordingly, we determine that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review. III. CONCLUSION For the foregoing reasons, the evidence of record favors exercising our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a). IV. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 16
Discretionary denialPatents in suitUS 10,616,932 - Dell Inc. / Dell Technologies Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01480 · APJ Sharon Fenick · IPR · Institution
The Board denied institution under § 314(a), citing the Fintiv factors, including the earlier trial date and the petition’s not particularly strong merits, for claims 1–3, 10–13, 17, and 20–22.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 4, 8 (quoting Ex. 2001, 5). We are not persuaded by Petitioner’s unsupported argument that the trial date is speculative. We also consider the fact that the median time-to-trial statistic projects a trial date of July 2025, earlier than the actual date set by the district court. Ex. 2001; Ex. 2007; Prelim. Resp. 8–9. The fact that the time-to-trial statistic is earlier than the scheduled trial date confirms that the scheduled trial date is credible and should be given weight. From this evidence, we are persuaded that we should rely on the scheduled trial date in the Lenovo Group litigation as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors exercising discretionary denial. C.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“1. Analysis of Petitioner’s Challenges a) Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces. Additional education can substitute for less work experience, and vice versa. Pet. 14; see Ex. 1003 ¶ 41. Patent Owner does not dispute or comment on this proposal or propose an alternate level of ordinary skill in the art. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art, which is consistent with the evidence of record, including the asserted prior art and ’103 patent.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same standard used in district courts, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Neither Petitioner nor Patent Owner asserts that any claim term requires claim construction (Pet. 14–15; Prelim. Resp.) and we do not discern that any claim term requires construction to arrive at our conclusions herein. c)” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“2. Conclusion Regarding the Merits The discussion above identifies weaknesses in the Petition that we have considered in our evaluation of Fintiv factors. While we do not make a determination regarding whether the Petition shows that there is a reasonable likelihood of prevailing were we to institute, for the reasons given, we determine that this Petition does not present particularly strong merits. G. Weighing the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv at 6. Because of the Sotera stipulation, factor 4 weighs strongly in favor of not exercising discretion. However, two other factors weigh in favor of exercising discretion, especially the trial date factor. The merits of Petitioner’s challenge are not particularly strong. A balanced assessment of the factors leads us to exercise discretion to deny the Petition. Therefore, we conclude that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 22
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,852,103
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.