- PTAB · Oct 16, 2025 · PGR2025-00041 · APJ Justin T Arbes · PGR · Institution
The Board instituted PGR of claims 1–20 on all asserted grounds after finding claim 1 more likely than not obvious over Hendry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“a post-grant review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute a post-grant review as to claims 1–20 of the ’243 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, electrical engineering, or a related field, and two years’ experience in data management or client-server systems and communications,” where “a higher education or skill level might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner did not file a Preliminary Response disputing Petitioner’s position. Based on the record presented, including our review of the ’243 patent and the types of problems and solutions described in the ’243 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“any reasonable construction.” Pet. 7. Patent Owner did not file a Preliminary Response disputing Petitioner’s position. We conclude that no express interpretation of any claim term is necessary to determine whether to institute a post-grant review in this proceeding.4 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)). 4 The parties, however, are encouraged to address during trial (1) interpretation of the term “user profile” in the challenged claims, particularly in view of the Specification’s apparent definition of the term “profile” (see Ex. 1001, col. 14, ll. 51–55) and description of exemplary data from which a “user profile” may be generated (id. at col. 18, ll. 40–58), and (2) the scope of the various instances of the phrase “in response to” in the challenged claims. Also, if either party intends to argue a claim interpretation during trial, including what the plain and ordinary meaning of a term is, the party should do so in a clearly designated section of its briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 44–49, available at https://www.uspto.gov/ TrialPracticeGuideConsolidated; 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.”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination based on a combination of references requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)); see also KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Also, “[t]hough less common, in appropriate” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 12,039,243 - Unified Patents, LLCInstitutedPTAB · Apr 19, 2023 · PGR2022-00060 · APJ Kara L Szpondowski · PGR · Institution
The Board instituted PGR on claims 1, 2, and 5 because Petitioner showed it was more likely than not to prevail on obviousness over Chuang and Karczewicz.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of post-grant review is authorized when “the information presented in the petition . . ., if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). “When instituting post-grant 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. §42.208(a) (2022). Based on the current record, and for the reasons explained below, we determine that Petitioner has demonstrated that it is more likely than not that it will prevail with respect to at least one challenged claim. Accordingly, we institute post-grant review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“Because the claim language does not recite a specific type of indicator, i.e., an “MPM indicator,” “MPM usage indicator,” or even one of the other indicators described in the Specification, we need not determine, at this time and on the current record, to which indicator the “first indicator” may be referring, or even if it may refer to any of them. Moreover, although the “second indicator” explicitly recites “a list” comprising “intra prediction modes,” we are not persuaded, on this record, that the “first indicator” precludes the “at least one intra prediction mode” from being in a list. See Crystal Semiconductor Corp. v. TriTech Microelectronics Intern., Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (“the use of ‘comprising’ creates a presumption that the body of the claim is open . . . [and] that the recited elements are only part of the device, that the claim does not exclude additional, unrecited elements.”). The Specification describes each of the “MPM indicator,” “MPM usage indicator,” and “remaining mode indicator” as being at least associated with a list. See Ex. 1001, 13:6–7, 13–16 (“For example, the MPM indicator may be an index for the MPM list . . . As the MPM indicator is signaled, the decoding apparatus may determine the MPM MPM list.”), 19–21 (“The MPM usage mode may be a mode in which the MPM to be used for intra prediction for the target block is determined using the MPM list”), 70:45–51 (“[t]he processing unit may determine a probable remaining mode indicated by the probable remaining mode indicator, among one or more probable remaining modes in the probable remaining mode list, to be the intra-prediction mode of the target block . . . the remaining mode indicator may be the index of the probable remaining mode list”). The claim language defines the bounds of claim scope. Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619–20 (Fed. Cir. 1995) (“First, and most importantly, the language of the claim defines the scope of the protected invention.”). We, therefore, find it germane to focus on the claim language itself. We interpret the claim language to have its plain and ordinary meaning, i.e., the “first indicator . . . indicates that the at least one first intra prediction mode is used for the intra prediction for the target block.” We, therefore, determine that, at this stage of the proceeding, no express construction beyond the plain language of the claim is necessary to resolve any controversy in this proceeding to determine whether to institute post-grant review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We emphasize that this determination is based on the current record and is preliminary. We encourage the parties to further develop these arguments at trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“enable performing intra-prediction for the target block, so Chuang discloses, or at least renders obvious,” to a person of ordinary skill in the art, “that intra-prediction should be performed.” Pet. 32 (citing Ex. 1005 ¶ 26). However, Petitioner contends, “to the extent further disclosure is required” a person of ordinary skill in the art “would have been motivated to modify Chuang to perform intra-prediction to decode a block of video data as taught by Karczewicz using the intra-prediction mode determined in Chuang.” Id. (citing Ex. 1003 ¶ 97; Ex. 1005 ¶¶ 10, 35, 37; Ex. 1006 ¶ 182, Fig. 8). Petitioner contends that Karczewicz discloses determining an intra-prediction mode to use in decoding, and further that its video decoder “may ‘use the determined intra-prediction mode to decode the block.’” Id. at 33 (citing Ex. 1006 ¶ 182; Ex. 1003 ¶ 99); see Ex. 1006, step 160 of Figure 8. have understood that Chuang’s determined intra-prediction mode would be used for performing intra-prediction of the target block being decoded, as taught by Karczewicz.” Pet. 25–26 (citing Ex. 1003 ¶¶ 80–81). Petitioner contends that a person of ordinary skill in the art “would have been motivated to modify Chuang to perform intra-prediction to decode a block of video as taught by Karczewicz using the intra-prediction mode determined in Chuang.” Id. at 27 (citing Ex. 1003 ¶ 83; Ex. 1005 ¶¶ 10, 37; Ex. 1006 ¶ 182). Petitioner contends that a person of ordinary skill in the art “would have been motivated to make this modification because it would have been the combination of prior art elements (determining an intra-prediction mode using multi-level MPM sets, as taught by Chuang, combined with decoding a block of video data using a determined intra-prediction mode, as taught by Karczewicz) according to known methods (decoding a block using an intraprediction mode) to yield the predictable result of decoding blocks in an encoded bitstream using an intra-prediction mode determined by the decoder.” Id. at 27–28. Petitioner asserts that “Karczewicz provides an express teaching, suggestion, or motivation to perform intra-prediction to decode a block of video data, as shown in step 160 of Figure 8 . . . after an intra prediction mode has been determined in step 158 for the target block.” Id. at 28 (citing Ex. 1006 ¶ 81). Petitioner further contends that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Chuang to perform intra-prediction based on the intra-prediction mode determined . . . [because] [d]ecoding a block of video data using a determined intra-prediction mode was well-known in the art as taught by Karczewicz, and Chuang specifically contemplates a decoder using its method to determine eh intra-prediction mode using multi-level” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,212,553 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Mar 23, 2022 · PGR2022-00013 · APJ Daniel J Galligan · PGR · Institution
The Board denied institution of post-grant review because Patent Owner disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o post-grant review will be instituted based on disclaimed claims.” A disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d).” slip op. at 2
NonePatents in suitUS 10,951,742 - Google LLC v. Jenam Tech LLCInstitution deniedPTAB · Nov 17, 2021 · PGR2021-00082 · APJ Jason M Repko · PGR · Institution
The Board denied institution because Patent Owner disclaimed the sole challenged claim, and the Board cannot institute review on disclaimed claims.
RulingsInstitution decision- Adverse judgmentDecided for patent owner
“1 In its Preliminary Response, Patent Owner also argues that the disclaimer of claim 1 should not be considered a request for adverse judgment. Prelim. Resp. 7 (citing General Elec. Co. v. United Techs. Corp., Case IPR2017-00491, Paper 9 (July 6, 2017) (designated precedential on Sept. 9, 2019)). In an email to the Board, Petitioner requested additional briefing on this issue. Ex. 3001. In a conference call with the Board, Petitioner argued that the Board should enter adverse judgment in this case, citing Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). Patent Owner opposed Petitioner’s request. Because nothing in Arthrex compels entry of an adverse judgment in this case, we determine that no further briefing on the adverse-judgment issue is necessary.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 37 C.F.R. § 42.207(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o post-grant review will be instituted based on disclaimed claims.” A disclaimer is “considered as part of the original patent” as of the date on which it is” slip op. at 2
NonePatents in suitUS 10,742,774
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.