- PTAB · Nov 7, 2025 · IPR2025-00988 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR on claims 1–14 because Samsung took alternative claim-construction positions in the Board and district court without explaining why.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“decision in Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20 (Nov. 3, 2025 (“Revvo”)).12 Revvo provides that “when a petitioner takes alternative positions [on claim construction] before the Board and a district court, that petitioner should, at a minimum, explain why alternative positions are warranted.” Revvo at 3–4. On November 5, 2025, the Director of the Office issued an informative decision in Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025- 00340, Paper 18 (Nov. 5, 2025) (“Tesla”)). Tesla provides that: “Allowing a petitioner to advance a claim construction before the Board when that petitioner has made inconsistent indefiniteness arguments in district court fails to further, but instead detracts from, the Office’s goal of ‘providing greater predictability and certainty in the patent system.’” Id. at 4 (citing Revvo at 4–5). Tesla further provides that when a petitioner raises inconsistent invalidity challenges in two forums, “that petitioner is required to explain why those different positions are warranted.” Id. at 3 (citing Revvo at 3–5). In this proceeding, Petitioner takes alternative positions on claim construction before the Board and a district court, but fails to explain why alternative positions are warranted. Therefore, in accordance with Revvo and Tesla, we deny institution.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“CONCLUSION For the foregoing reason, we determine that trial should not be instituted on claims 1–14 of the ’281 patent. ORDER Upon consideration of the record before us, it is ORDERED that an inter partes review is not instituted.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“In the Petition, “Petitioner submits that no formal claim constructions are necessary.” Pet. 3. Petitioner does not discuss its position on claim construction in district court nor why alternative positions before the Board and the district court are warranted. See id.” slip op. at 7
Claim constructionDiscretionary denialPatents in suitUS 10,687,281 - PTAB · Nov 7, 2025 · IPR2025-00933 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of review of claims 1–12 because Samsung advanced alternative claim-construction positions without explaining why they were warranted.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“IPR2025-00632, Paper 20 (Nov. 3, 2025 (“Revvo”)).10 Revvo provides that “when a petitioner takes alternative positions [on claim construction] before the Board and a district court, that petitioner should, at a minimum, explain why alternative positions are warranted.” Revvo at 3–4.” slip op. at 6
Discretionary denialPatents in suitUS 11,470,595 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. 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). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00135 · APJ John A Hudalla · IPR · Institution
The Board denied institution of IPR on all challenged claims, exercising § 314(a) discretion under Fintiv because the parallel litigation was advanced and trial would precede a final written decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Under the latest applicable guidance, Petitioner’s Sotera stipulation “is highly relevant, but [is] not . . . dispositive by itself.” CAPJ Memo at 2– 3. Accordingly, we consider Petitioner’s stipulation “as part of [our] holistic analysis under Fintiv.” Id. at 2. In theory, Petitioner’s stipulation could “mitigate[] any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” regarding unpatentability/ invalidity. Sotera, Paper 12 at 19. We note that Petitioner’s initial invalidity contentions included the two asserted references here, Bennett and Nashida. Although Petitioner served those contentions before the filing of the instant Petition—in which it proffered its stipulation—we cannot discern from the instant record whether Petitioner’s present invalidity positions in the underlying litigation incorporate any aspects of its grounds here based on Bennett and Nashida. Still, we view Petitioner’s stipulation as significantly mitigating potential conflict given the likelihood that the court would hold Petitioner (and its privies) to Petitioner’s representations made here.5” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK”). For the reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“controller” that “receive[s] an identifier for identifying a second video content from [an] external mobile terminal” and “acquire[s] the second video content via the internet using said identifier.” Ex. 1001, 20:29–31, 20:46–47, 20:52–55 (alterations and emphasis added). In the Bennett obviousness ground, Petitioner cites Bennett’s control signal that directs display of a video stream on a television screen for teaching the recited “identifier.” Pet. 32 (citing Ex. 1004 ¶ 32). Petitioner further cites Bennett’s teaching of an Internet server as a media source for teaching the “acquire[s]” limitation. Id. at 34 (citing Ex. 1004 ¶ 55). Petitioner alternatively cites its declarant’s testimony and contends that it would have been obvious “to use an identifier such as URL in Bennett’s system to retrieve video content from the Internet.” Id. at 35 (citing Ex. 1003 ¶ 87). Yet Patent Owner’s arguments (see Prelim. Resp. 59–64) call into question whether Bennett teaches or suggests the use of either Bennett’s control signal or a URL to “acquire the second video content via the internet.” In addition, we preliminarily agree with Patent Owner that Petitioner’s arguments regarding the URL “focus on justifying an example of what an identifier could be, and fail[] to address a scenario that would justify the receipt of a URL from a phone/remote” in Bennett’s system. Id. at 63. Petitioner’s further contentions for these limitations in the Bennett– Nashida obviousness ground (see Pet. 73–75) do not necessarily cure the deficiencies mentioned by Patent Owner. Petitioner contends that “Nashida discloses the use of identifiers, such as URLs, for retrieving internet content” and cites Nashida’s teaching of “‘controller 1010 transmit[ting] a command of requesting a transmission of a URL’ for retrieving and displaying web content on a display apparatus.” Id. at 73 (quoting Ex. 1005 ¶ 120). Yet, according to Patent Owner, Nashida appears to show the URL moving in the opposite direction of Petitioner’s intended mapping: “It is therefore the image display apparatus (the alleged ‘display apparatus’) that sends the URL to the remote controller . . . , and not the other way around, as claimed by Petitioner.” Prelim. Resp. 67 (citing Ex. 1005 ¶ 1216). At the very least, these issues preclude a finding of “particularly” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,219,020 - TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00134 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR challenging claims 1–11, 13, and 15–20, finding that the advanced Texas litigation and trial timing outweighed the Petition’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“September 22, 2025, which is less than four months after the statutory deadline for this Decision and “almost eight months before the projected statutory deadline for a final written decision.” Prelim. Resp. 25 (citing Ex. 2004). Accordingly, the trial is currently set to occur several months before any Final Written Decision in this case will issue. Although trial delays are a possibility, there is no evidence before us that would indicate the likelihood of a trial postponement. Thus, this factor strongly favors discretionary denial.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the Petition does not present a particularly strong challenge, because it inadequately addresses at least one claim limitation. In particular, limitation [1F] requires “USB interface circuitry [that] transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,650,780 - Fortinet, Inc. v. Croga Innovations Ltd.Institution deniedPTAB · Mar 27, 2025 · IPR2025-00086 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because Delco and Adams did not teach the internal firewall limitations; it also denied Fortinet’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. JOINDER In this proceeding, Petitioner seeks to join IPR2024-01196. However, the Board did not institute an inter partes review in that proceeding, relying on substantially identical reasoning as here. Thus, there is no pending proceeding in the ’1196 IPR to join. As a result, Petitioner’s request to join the ’1196 IPR is denied.” slip op. at 21
- Expert testimonyPetitioner expert discountedOther
“The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 39–42 with EX1003 at ¶¶ 90–96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 4 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,601,780 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Mar 10, 2025 · IPR2024-01343 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Principles of Law Petitioner bears the burden of persuasion to prove unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). 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 skill in the art; and (4) if present, any objective evidence of obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“dedicated to claim construction, but Patent Owner does address claim construction in its discussion of Petitioner’s challenges. See, e.g., Prelim. Resp. 21–23 (Patent Owner arguing: “Petitioner’s ‘Feed Selection Mapping 2’ should be rejected because it relies on rewriting the claim so that it encompasses a device other than the aggregator providing user information to the publisher. . . . Because Whitehead’s alleged aggregator does not provide profiles to the alleged publisher in a channel request responsive to that request, ‘Feed Selection Mapping 2’ does not even meet the plain reading of the aggregator providing to the publisher ‘the media feed selection’ with ‘user information’ included.” (emphasis added)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Obviousness of Claims 1 and 2 over Whitehead (Ground 1)” slip op. at 9
- BurdenDecided for patent owner
“We find the Petition to be too confusing to follow. It is Petitioner’s burden to articulate a coherent and discernable case that is readily understandable by the Board and that places Patent Owner on notice of the basis of Petitioner’s case so that Patent Owner may have the opportunity to respond. See 37 C.F.R. § 42.104(b) (“[T]he petition must set forth . . . a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art.” (emphasis added)). In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its Whitehead obviousness challenge.” slip op. at 16
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,923,947 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Mar 10, 2025 · IPR2024-01341 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–10 unpatentable under any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’261 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“read limitations out of the claims.” (citation omitted)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 10
- BurdenDecided for patent owner
“Thus, according to Whitehead, the purported client device (media player 115) is a TV or monitor that displays menus, whereas the selection of programming is performed by the remote control 111 in conjunction with the set top box (content processing device 110). Petitioner does not explain adequately how the TV/monitor itself has the capability of selecting a program or, in terms of the claim, how the aggregator (set top box) receives a media feed selection from the TV/monitor. Petitioner’s lengthy string cite, see Pet. 21, is not an adequate substitute for an explanation in the Petition, and we decline to study all the cited portions to try to discern whether Petitioner might have a viable explanation as to how the TV/monitor selects programming.” slip op. at 12
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,215,261 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Feb 25, 2025 · IPR2024-01339 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on claims 1–20 because the petition did not show a reasonable likelihood of proving the claims obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’597 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’597 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 4–5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 26.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner cites the Alermoth Declaration, paragraphs 198–201, but does not explain the content or pertinence of this testimony. See Pet. 21. We have reviewed this testimony and determine that it is conclusory. This testimony repeats, almost verbatim, the language in the Petition without any further explanation or supporting reasoning or evidence. See Ex. 1002 ¶¶ 198–201. We accord this testimony little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to Petitioner’s contention that “it would have been obvious for a POSITA to modify Ferman’s system to more explicitly select clips for inclusion in the final video programming based on their ability to transition between other events,” we determine that this contention is not adequately supported by articulated reasoning. See Pet. 48. Petitioner asserts that, “[a] POSITA would have been motivated to do so by at least Ferman’s expressed desire to ‘include content suited to [the user’s] particular viewing preferences.’” Id. (citing Ex. 1002 ¶ 89). There is no articulated reasoning (and we can discern none) as to how or why including content suited to a user’s preferences would have motivated a skilled artisan to modify Ferman to select transitional clips. Petitioner also asserts, “doing so would provide more compelling and cohesive video programming.” Id. There is no articulated reasoning or explanation for this assertion and we find this statement to be too general and unsupported. We determine that Petitioner has not established that a skilled artisan would have been motivated to modify Ferman’s system as proposed in the Petition. Patent Owner argues that “Petitioner fails to demonstrate that Ferman discloses ‘identifying . . . a plurality of first[/second] transitional clips.’” Prelim. Resp. 39 (alteration in original). We agree with Patent Owner that the Petition fails to provide adequate support for its assertion that limitations 1[d] and 1[j] are taught or suggested by Ferman.” slip op. at 26
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,317,597 - Tiktok Inc. v. Ntech Properties, Inc.Institution deniedPTAB · Feb 25, 2025 · IPR2024-01338 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all grounds because the petition did not show a reasonable likelihood of prevailing on any challenged claim, including deficiencies in the Marcus156- and Ferman-based obviousness showings.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION We have weighed the evidence presented by Petitioner and considered its arguments. We determine that Petitioner fails to establish a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition. For each challenged claim in each asserted ground of unpatentability, Petitioner fails to establish that the asserted art teaches or suggests multiple recited limitations. Accordingly, we determine that trial should not be instituted on claims 1–20 of the ’185 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’185 patent. 3 1 Petitioner identifies TikTok Inc., Bytedance Ltd., Bytedance Pte. Ltd., and TikTok Pte. Ltd. as real parties-in-interest. Pet. 2. 2 Patent Owner identifies itself, NTECH Properties, Inc., as the real party-ininterest. Paper 4 (Patent Owner’s Mandatory Notices), 1. 3 In addition to the Petition and Preliminary Response, Petitioner’s Preliminary Reply (Paper 7) and Patent Owner’s Preliminary Sur-reply (Paper 8) were filed. However, these papers were limited to arguments related to discretionary denial under 35 U.S.C. § 325(d). We do not reach the issue of discretionary denial in light of our decision to deny institution on the merits.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’185 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 23. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner. It is not disputed by the Patent Owner and is consistent with the ’185 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). The “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Neither Petitioner nor Patent Owner requests express claim construction. Pet. 5; Prelim. Resp. 23. And, no need exists to expressly construe any claim terms to resolve this dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,875,185
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.