- Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co. Ltd.Adverse judgmentPTAB · May 19, 2026 · IPR2025-01327 · APJ Sheila F Mcshane · IPR · Adverse judgment
The Board entered adverse judgment against Throughtek on claims 1–19 after finding it abandoned the contest by failing to file mandatory notices or respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Order to Show Cause explained that under 37 C.F.R. § 42.73(b), “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Paper 8, 3. The Order to Show Cause also explained that failure to participate in a proceeding, such as failure to file mandatory notices as required under 37 C.F.R. § 42.8, may be considered abandonment of the contest and result in adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Id. (citing Cellpak, Inc. v. Mambate USA Inc., IPR2021-00007, Paper 4 at 2 (PTAB Mar. 23, 2021)). The Order to Show Cause gave Patent Owner ten calendar days to show cause why adverse judgment should not be entered against it. Id. Patent Owner did not respond to the Order to Show Cause. More than ten calendar days have elapsed since the date the Order to Show Cause was entered, and Patent Owner has not filed mandatory notices. In view of Patent Owner’s failure to file mandatory notices within the specified time period, we determine that Patent Owner has abandoned the contest. Pursuant to 37 C.F.R. § 42.73(b)(4), we construe Patent Owner’s abandonment of the contest as a request for adverse judgment. Under these circumstances, we determine that entry of judgment against Patent Owner is appropriate.” slip op. at 3
NonePatents in suitUS 9,727,655 - PTAB · May 13, 2026 · IPR2025-01444 · APJ George R Hoskins · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed the entire patent term, entering judgment against claims 1–6.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during an inter partes review proceeding. See 37 C.F.R. § 42.73(b). In addition, “[a]ctions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; [and] (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Because Patent Owner has explicitly requested adverse judgment against itself pursuant to Rule 42.73(b), and has disclaimed the entire term of the ’584 patent, Patent Owner’s request for adverse judgment is granted. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Request for Adverse Judgment is granted; and FURTHER ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1–6 of the ’584 patent.” slip op. at 3
NonePatents in suitUS 7,547,584 - PTAB · May 13, 2026 · IPR2025-01082 · APJ David C Mckone · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed the entire patent term, entering judgment against claims 1–10.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during an inter partes review proceeding. See 37 C.F.R. § 42.73(b). In addition, “[a]ctions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; [and] (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Because Patent Owner has explicitly requested adverse judgment against itself pursuant to Rule 42.73(b), and has disclaimed the entire term of the ’181 patent, Patent Owner’s request for adverse judgment is granted.” slip op. at 3
NonePatents in suitUS 6,888,181 - Tableau Software, LLC v. Icharts LLCAll claims unpatentablePTAB · May 7, 2026 · IPR2024-01387 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–16 are unpatentable under the instituted obviousness grounds, including Becerra, the QlikView Manuals, and combinations with other references.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“why it is trustworthy and how it archives dates by which the webpages were accessible, as this is an information resource on which librarians reasonably rely. See FED. R. EVID. 703. We agree with Petitioner that Dr. Hall-Ellis does have personal knowledge of the facts stated in the remaining testimony (e.g., what she actually downloaded from websites), and that FEDERAL RULE OF EVIDENCE 602 is inapplicable to her testimony offered as an expert. See Pet. Opp. 5–6 (citing Ex. 1030 ¶¶ 26, 29–32, 35, 37–39). We find her testimony to be relevant to the issues presented and specifically to whether the QlikView documents were publicly accessible. We also find no danger that the testimony would confuse the issues or mislead the Board or present unfair prejudice to Patent Owner. Accordingly, we deny Patent Owner’s Motion as to the remaining portion of Dr. Hall-Ellis’s declaration.” slip op. at 92
- Strike new argumentNew argument disregardedGranted
“FURTHER ORDERED that Petitioner’s Motion to Strike portions of Patent Owner’s Reply on its Motion to Exclude (Paper 32) is granted; and” slip op. at 102
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“1. Motivation to Combine Becerra and Couckuyt Petitioner argues that a person of ordinary skill in the art would have been motivated to combine the teachings of Becerra and Couckuyt because such a person would have recognized that Couckuyt discloses useful techniques of assigning data to Becerra’s charts, including assigning data to each axis. Pet. 34 (citing Ex. 1005 ¶¶ 19, 52, Fig. 5; Ex. 1003 ¶ 224). Petitioner contends that Couckuyt discloses associating data from a “spreadsheet document” with a chart, such as a “bar graph.” Id. at 35 (citing Ex. 1006, 6:1–37; Figs. 3a, 3c). below. Petitioner’s annotations to Figure 4 identify “Drop Zones” in red and “Data Fields” in Blue. Id. at 36. Petitioner contends Couckuyt discloses a “drag-and-drop user interface (DDUI) . . . associated with a data source, such as the two-dimensional data source 300,” and Figure 4 illustrates the DDUI permitting “value data fields and the characteristic data fields . . . to be dragged and dropped into drop zones.” Id. at 35–36 (citing Ex. 1006, 7:10–13). Petitioner contends that a “primary benefit of the charting DDUI is that the user can quickly change the data that is being presented in the chart,” and using Couckuyt’s techniques, a user can “quickly change the data” and see the desired effects. Id. at 36 (citing Ex. 1006, 1:18–19; Ex. 1003 ¶ 228). Petitioner contends that when Becerra’s control panel includes multiple charts, Couckuyt’s techniques would allow dragging-anddropping data from a data source to multiple charts, and would simplify the process of assigning data to multiple control panel components. Id. at 36–37 skill in the art would have also had a reasonable expectation of success combining Becerra with Couckuyt because the combination would amount to nothing more than incorporating Couckuyt’s well-known drag-and-drop techniques into Becerra’s system. Id. at 37 (citing Ex. 1003 ¶¶ 229–231). Patent Owner responds that Couckuyt focuses on selecting a data icon that corresponds to dragging and dropping data fields, not dragging and dropping data, while Becerra teaches that selecting various data ranges from the spreadsheet is desirable. PO Resp. 36–37 (citing Ex. 1004 7:48–52; Ex. 2001 ¶ 146). According to Patent Owner, a person of ordinary skill in the art would not have been motivated to merely select data fields that do not limit the selected data in any way. Id. Patent Owner further argues Becerra’s method of binding components to a spreadsheet range and extracting formulas from a spreadsheet teaches away from the multiple chart generation scheme of Couckuyt that uses drag and dropping of data fields. Id. at 37. According to Patent Owner, Couckuyt is directed to the need for a charting DDUI that can generate multiple charts at the same time and such a need does not exist in Becerra which in turn is focused on creating a control panel that is an interactive graphics simulation. Id. (citing Ex. 1004, 1:66–67, 2:5–8; Ex. 1005 ¶ 11; Ex. 2001 ¶ 148). Based on our review of the complete record, we determine that” slip op. at 31
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Whether QlikView Manuals Qualify as Prior Art Petitioner argues that “the QlikView Manuals describe a well-known system and are printed publications available to the public at least by July 8, 2008.” Pet. 7–9. Petitioner offers ample evidence to demonstrate the QlikView Manuals were publicly accessible by July 8, 2008. See id. (citing Ex. 1008; Ex. 1009; Ex. 1014–1023; Ex. 1003 ¶ 129–140; Ex. 1030;11 Ex. 1068 ¶¶ 4–7; Ex. 1032; Ex. 1033). Petitioner contends in 2008, QlikView was a well-known software product sold by QlikTech International AB (“QlikTech”). Id. at 8 (citing Ex. 1003 ¶ 129; Ex. 1030 ¶ 23; Ex. 1068 ¶¶ 4–7). Petitioner asserts that QlikTech announced that QlikView version 8.50 was scheduled for release on June 30, 2008, and QlikTech’s website added the “QlikView 8.50” hyperlink by July 8, 2008. Id. (citing Ex. 1003 ¶¶ 129–131; Ex. 1022, 1; Ex. 1068 ¶ 7). Petitioner contends that, as of July 8, 2008, a person of ordinary skill in the art would have understood that they could view the QlikView Manuals in the installation package. Id. (citing Exs. 1014–1017; Ex. 1003 ¶¶ 131–132; Ex. 1068 ¶ 7). Petitioner further contends that the QlikView Manuals were also available on QlikTech’s website as of this 11 As discussed below (see infra § IV.A), we grant Patent Owner’s Motion to Exclude as to certain portions of Exhibit 1030 and do not give them any weight. However, we deny Patent Owner’s Motion as to the remaining portions of Dr. Hall-Ellis’s testimony as well as Ms. Lofton’s testimony and various other exhibits proffered by Petitioner to show public accessibility of the QlikView manuals as of July 8, 2008. QlikView 8.50 was published on July 8, 2008. Id. at 8–9 (citing Exs. 1008, 1009, 1017, 1059, 1060; Ex. 1030 ¶¶ 29, 37). In its Patent Owner Response, Patent Owner does not contest that the QlikView Manuals were published and publicly available by July 8, 2008. PO Resp. 50 n.2 (noting only that Patent Owner intends to move to exclude evidence Petitioner relies on to establish the publication date for QlikView Manuals); Tr. 45:3–19. We are persuaded that Petitioner has shown by a preponderance of the evidence that the QlikView Manuals were publicly available as of July 8, 2008.12” slip op. at 50
Patent outcomesUS 8,271,892 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,271,892 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-01399 · APJ Thu A Dang · IPR · Final written decision
Claims 1–6, 8–15, and 17–20 are unpatentable under § 103, based on Buer alone or in the combinations listed.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Apple Inc. filed a motion for joinder and a petition in IPR2024-01399, which were granted, and, therefore, Apple Inc. has been joined as petitioner in this proceeding. We also granted a Joint Motion to Terminate Inter Partes Review Proceeding as to the other petitioner, leaving Apple Inc. as the sole petitioner.” slip op. at 1
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 8. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from [the] other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 39
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-00782 · APJ Thu A Dang · IPR · Final written decision
Claims 1–6, 8–15, and 17–20 are unpatentable under § 103 over the stated prior-art grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39
- Skill levelOther
“B. Principles of Law A patent 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 determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.10 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Buer teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Buer.” slip op. at 39
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgmentPTAB · Sep 8, 2025 · IPR2025-00002 · APJ Norman H Beamer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–20 after disclaimer and terminated the proceedings.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2
NonePatents in suitUS 11,880,319 - Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgmentPTAB · Sep 8, 2025 · IPR2025-00001 · APJ Norman H Beamer · IPR · Adverse judgment
Adverse judgment was entered against Patent Owner on claims 1–20 after statutory disclaimer; the proceedings were terminated.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2
NonePatents in suitUS 11,386,024 - Disney Media & Entertainment Distribution LLC v. Digital Media Technology Holdings, LLCAll claims unpatentablePTAB · Aug 25, 2025 · IPR2024-00736 · APJ Lisa A Murray · IPR · Final written decision
Claims 1, 4–7, and 9 are unpatentable as obvious over Garfinkle and Kosten; claim 11 is unpatentable as obvious over Garfinkle, Kosten, and Allen.
RulingsFinal written decision- ExcludeMotion to exclude, grantedPetitioner expert discountedGranted
“Our reviewing court has held that if a declarant fails to qualify as a person of ordinary skill in the art, then that person’s testimony regarding the knowledge or motivations of one of ordinary skill in the art is irrelevant as a matter of law. Kyocera Senco Indus. Tools Inc. v. International Trade Comm’n, 22 F.4th 1369, 1377–78 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Mr. Daniels’ declaration consists of an analysis of the cited prior art in comparison to the challenged claims and a discussion of whether there would have been a 2 The motion does not seek to exclude the declaration of the named inventor of the ’725 patent, Nick Stiliadis. See Ex. 2109 (Stiliadis Declaration). motivation to combine the prior art. Ex. 2121 ¶¶ 4–20. Mr. Tulchin’s declaration addresses claim construction issues. Ex. 2131 ¶¶ 5–35. Each declarant, therefore, addresses issues that must be considered from the vantage point of a POSITA at the time of the invention, meaning a person with the level of ordinary skill defined in Section II.E.1 above. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (obviousness). If Mr. Daniels and Mr. Tulchin do not qualify as POSITAs, as Petitioner alleges, then their opinion testimony is inadmissible under Federal Rules of Evidence 702 (Testimony by Expert Witnesses). We find that there is insufficient evidence in the record to establish that Mr. Daniels qualifies as a POSITA in relation to the ’725 patent. Mr. Daniels has an undergraduate degree in engineering physics in addition to a law degree. Ex. 2121 ¶ 2. His declaration, however, does not establish that he also has “one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” See Section II.E.1 above. Mr. Daniels characterizes his non-legal work experience as follows: The rest of my professional career has been spent working in my own companies in the research, development and prototyping/commercialization of a number of different technologies, principally including fishing rod technology, digital video file transport, storage and processing, LED-based light-emitting tapes, drone control systems, wearable medical related electronic devices and breath-based diagnostic devices. Ex. 2121 ¶ 3; see also Ex. 1023, 99 (Daniels Deposition) (describing work on “a suite of interactive television innovations,” including “the first working pause button”). None of the projects identified appears to relate to “marketing and distribution of multimedia material over a computer network.” Patent Owner argues that Mr. Daniels “was involved (at the time of the filing of the application which matured into the ’725 patent) in making inventions, that dealt with interactive television, video pause buttons and video file provision over the Internet.” Sur-Reply Br. 6. However, neither Mr. Daniels’ declaration nor his deposition testimony assert that he ever worked on “video file provision over the Internet,” let alone that he did so for one year or more. See Ex. 2121 ¶ 3; Ex. 1023, 98–100. We find that the evidence in the record is not sufficient for us to conclude that Mr. Daniels qualifies as one of ordinary skill in the art. We further find a lack of evidence establishing that Mr. Tulchin qualifies” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Decision on Institution, we adopted the following definition of the level of skill for one of ordinary skill in the art: “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” Dec. 9. Patent Owner’s proposed definition differs from the Board’s only in that it adds a Bachelor of Science in engineering physics to the list of degrees that one of ordinary skill in the art might possess. See id. We view engineering physics as being related to the fields of electrical engineering, computer engineering, and computer science. Accordingly, following a review of the full record, we view Patent Owner’s proposed definition in its Response as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaning
“When interpreting the meaning of a claim, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner has, briefly, proposed six claim terms for construction: exhibition; exhibitor; broadcast exhibitor; distribution; marketing; and storing. PO Resp. 10. The Petition states that “[t]o resolve the grounds presented herein, Petitioner does not believe that any term requires explicit construction.” Pet. 12. We see no reason why “exhibition” and “exhibitor” should be understood as having a meaning as narrow as Patent Owner proposes. “Exhibition” and “exhibitor” encompass more than just a showing by “one in the exhibition business” because the specification of the ’725 patent identifies certain “exhibitors” that are not “in the exhibition business”: e.g., a high school, libraries, and other non-profit organizations. Ex. 1001, 12:38–41 (“schools, libraries, and other non-profit organizations”), Fig. 1 (“high school”). The plain and ordinary meaning of “exhibitors” is at least broad enough to encompass the types of exhibitors identified in the specification: movie theaters, television stations, satellite television operators, cable television operators, and non-profit organizations such as high schools. Ex. 1001, 4:20–22, Fig. 1. We further determine that some of these exhibitor types, including at least satellite and cable television operators, are “broadcast exhibitors.” Moreover, we find that the plain and ordinary meaning of the term “distribution” is not so narrow as to be limited to “the business of marketing films and providing copies to venues,” as Patent Owner proposes. See PO Resp. 10 (emphasis added). The claimed invention is a “method of marketing and distributing multimedia,” which is not limited to films. We agree with Petitioner that the term is at least broad enough to encompass distribution of any type of multimedia to any type of exhibitor contemplated in the specification. See Ex. 1001, 1:20–25 (multimedia types); Reply Br. 6. Similarly, the plain and ordinary meanings of “marketing” and “storing” are not limited to Patent Owner’s specific examples: interesting individuals in seeing a film and saving to non-volatile storage, respectively. See PO Resp. 10; Tr. at 57:3–7. The invention is directed to marketing and distributing multimedia, not just films, Ex. 1001, 16:21, and while the Specification refers to storing multimedia on “hard drives,” id. at 4:35–37, 4:44–52, there is nothing in the Specification, claims, or prosecution history that would limit storage only to hard drives or other non-volatile storage. The intrinsic evidence suggests that the proper construction of each” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been motivated to use Garfinkle’s video distribution system to implement Kosten’s distribution method to achieve the improvements described therein, such as: access to a large number of video products and advertising materials available at a centralized location (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), improved advertising capabilities (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), and improved distribution processes resulting in lower shipping and handling costs and labor intensity, improved security against piracy, wider and more flexible distribution capabilities, cost reductions for movie theaters, increased control over time and locations of exhibitions by studios and distributors, an ability to scale up or down distribution based on success in theaters, and an ability to track and monitor sales and marketing data (Ex-1007, 52, 54). Pet. 14 (citing Dystar Textilfarben v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) (A motivation to combine exists when the “improvement” results in a product or process that is “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”)). Petitioner further asserts that such a person would have had a reasonable expectation of success in achieving the objective of efficient content distribution through the proposed combination of Garfinkle and Kosten with no change in their respective functions because: (1) both are “from the same field and address the same well-known issues”; and (2) both references purport to achieve this objective in similar and predictable ways, “such as using the well-known teachings of digitizing content, correlating multimedia and associated advertising materials, and connecting multiple user sites to the central station through a public communications system.” Id. at 13, 16–17 (internal citations omitted) (citing Ex. 1005, 2:58–3:5, 3:32–49, 4:37–39; Ex. 1007, 54); Ex. 1002 ¶ 68. Patent Owner contends that there would have been no motivation to combine Kosten and Garfinkle because each represents a “complete solution[] to different file transport modes, Kosten involving simple file transmission to a theater and billboards, and Garfinkle involving file transmission to a [video-on-demand] user. Neither has a problem which is addressed by the other.” PO Resp. 33. Petitioner argues, however, and we agree, that “(1) a known technique can provide motivation to combine and (2) a known technique does not need to improve upon the primary reference—it just must be a ‘suitable option.’” Reply Br. 21 (citing Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023)). Thus, it does not matter that Kosten and Garfinkle each represent a complete and functional solution to digitally transporting media files. If the references in the combination address a known problem, such as issues with multimedia distribution, see Pet. 13–14, and the proposed combination is a suitable solution, then there would have been a motivation to combine the two references. Moreover, Petitioner persuasively argues that by combining Kosten and Garfinkle, one of ordinary skill in the art would have been able to achieve benefits such as lower shipping and handling costs, improved security against piracy, wider and more flexible distribution capabilities, an ability to more easily scale distribution up or down as needed, among other benefits. Pet. 14. We find that these benefits would have provided a sufficient motivation to combine Garfinkle’s technical implementation of a distribution process for large multimedia files with Kosten’s proposed business application, “beaming” films directly to theaters via satellite. Patent Owner’s arguments to the contrary are without merit.” slip op. at 21
Patent outcomesUS 7,574,725 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,574,725 - Microsoft Corporation v. Proxense, LLCAdverse judgmentPTAB · Apr 28, 2025 · IPR2024-00775 · APJ David C Mckone · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claims 1–17 after Patent Owner conceded unpatentability.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 47.73(b)(3) provides that “[a] party may request adverse judgment against itself at any time during a proceeding” and that “[a]ctions construed to be a request for adverse judgment include . . . [c]oncession of unpatentability . . . of the contested subject matter.” 37 C.F.R. § 42.73(b)(3). We grant Patent Owner’s request for adverse judgment.” slip op. at 2
NonePatents in suitUS 8,352,730
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.