- PTAB · Jul 28, 2025 · IPR2025-00307 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–18 on all four § 103 grounds, finding a reasonable likelihood that claim 1 would have been obvious over Darnell and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Settled expectationsDecided for patent owner
“or “Petition”), to institute an inter partes review of claims 1–18 (the “challenged claims”) of U.S. Patent No. 9,729,658 B2 (Ex. 1001, “the ’658 patent”). On March 28, 2025, the Board issued a notice extending the deadline for discretion briefing pursuant to the bifurcated discretionary denial review process that applies to proceedings with a patent owner preliminary response due after March 26, 2025.1 Paper 10. On May 1, 2025, RazDog Holdings LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”). Patent Owner filed a request for discretionary denial. Paper 11. Petitioner filed an opposition to Patent Owner’s request for discretionary denial. Paper 13. On May 16, 2025, the Acting Director issued a decision denying Patent Owner’s request for discretionary denial and referring the petition to the Board. Paper 18.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’658 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to users.” Pet. 13 (citing Ex. 1002 ¶ 146). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for users,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pat. 13–14 (citing Ex. 1002 ¶ 146; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 14 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 146). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the UI based on those traits in Darnell’s feed aggregation system. Id., ¶147. POSITAs would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any device (e.g., phone, computer, tablet, etc.) instead of only on a single device. Pet. 14–15 (citing Ex. 1002 ¶¶ 147–150). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell’s and Kim’s compatibility because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified UI displayed on user devices. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 151–152. Thus, POSITAs would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of user devices based on Darnell’s teachings.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,729,658 - PTAB · Mar 4, 2025 · IPR2024-01253 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 based on a reasonable likelihood of obviousness over Eldering-I and Eldering-II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“The CTPG states that “the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation.” CTPG 59. Patent Owner does not “clearly proffer any necessary stipulations” as the CTPG stresses. See id. at 61 (“If stating that issues are not material or in dispute, the patent owner should clearly proffer any necessary stipulations. For example, the patent owner may seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.”).” slip op. at 7
- Other 314aDecided for petitioner
“The Director has broad authority to exercise discretion to deny a petition under § 314. However, Patent Owner does not assert that Petitioner is a real party in interest with United Patents or allege that Petitioner is in a special relationship with Unified Patents based on its membership status, with respect to the EPR. See Paper 11, 5; Ex. 2013, 8–12 (different IPR finding no special relationship between Hulu and Unified Patents); Fintiv, Paper 11 at 13–14 (“If a petitioner is unrelated to a defendant in an earlier court proceeding, the Board has weighed this fact against exercising discretion to deny institution under NHK.”). In addition, the EPR involves only independent claims 1, 10, 19, and 27 and a different combination of prior art. See Ex. 2009, 1, 6 (relying on Wu, Rosenberg, and Angel, or Wu Rosenberg, Eldering, and Engel). In general, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311. Accordingly, we determine that the circumstances outlined do not tilt toward exercising discretion on this record to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - PTAB · Mar 4, 2025 · IPR2024-01252 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, 14–21, 23–25, 27–29, and 31–33 on the asserted obviousness ground over Wu and Doherty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner is correct. As summarized above, Fintiv factors 1–5 do not favor exercising discretion to deny the Petition so there is no need to address whether the merits are compelling. See Volvo Penta, Paper 15 at 4–5 (“On remand, if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution, the Board shall consider whether the record prior to institution demonstrates that the merits are compelling” (emphasis added)). In addition, as determined below, Petitioner shows that there is a reasonable likelihood of prevailing on the merits with respect to at least one challenged claim. Therefore, Fintiv factor 6 favors not exercising discretion to deny institution. Based on the foregoing discussion, a holistic review of the record favors not exercising discretion to deny institution. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 314 based on Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Contrary to Patent Owner’s arguments, Wu and Doherty are not cumulative to Knepper. As Petitioner argues, the Petition relies on Wu’s teachings regarding a digital recording/play back system allowing users to fast forward through or skip over advertisements during playback and Doherty’s teachings regarding rescheduling advertisements and other items of information (e.g., media content) in response to user input—neither set of teachings is present in Knepper. Reply 2.” slip op. at 45
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“construction for “intersplicer” as “software that selects advertising content and controls insertion and conveyance of advertising content in media content.” Pet. 5 (citing Ex. 1001, code (57), 7:45–55, 15:4–18). The specification implies that the intersplicer is “application software” that may include an “‘intersplicer’ module.” Ex. 1001, 7:45–58. The module “select[s] . . . the ads to be shown” and controls the insertion and conveyance of ads and the application software “automatically edits the selected advertisements into the presentation stream.” See Pet. 5 (quoting Ex. 1001, 7:45–55; citing Ex. 1003 ¶ 23); see also Ex. 1001, code (57) (“The intersplicer combines the media files with the ad files by providing control signals to the media player, causing the media player to present the ad files with the selected media files.”). Patent Owner does not propose a construction for “intersplicer” at this stage in this proceeding. See generally Prelim. Resp.7 The preliminary record supports Petitioner’s proposed construction of an “intersplicer” for purposes of this Institution Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,463,768 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00816 · APJ Russell E Cass · IPR · Institution
Instituted IPR on claims 1–7, 9–13, 16, 23, 25, 26, 28, and 29 over Behbahani, Leete, and Tan because claim 23 showed a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’330 patent. Pet. 73. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 54. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’330 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“That Behbahani and Tan appeared in an initialed IDS is sufficient to satisfy the first Advanced Bionics prong. See Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). Leete was not previously presented to the Office, but we need not decide whether the reference to Leete in Behbahani (see Section II.F.1 below) or Petitioner’s obviousness arguments concerning Behbahani and Leete suffice to satisfy the first Advanced Bionics prong for purposes of this Decision. As discussed below, even if we assume that the first part of the Advanced Bionics framework is satisfied, Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims in the second part of the framework.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,010,330 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 26, 2024 · IPR2024-00819 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one claim unpatentable over Behbahani, Leete, and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’164 patent. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’164 patent or any related patents dbased on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework when determining whether to exercise its discretion under 35 U.S.C. § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 18
- Skill levelSkill level patent owner adoptedOther
“of the alleged invention would have had “a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communication devices.” Pet. 10 (citing Ex. 1003 ¶¶ 27–29). Petitioner further states that “[a]dditional education or experience might substitute for the above requirements.” Id. Relying on Dr. Larson, Patent Owner argues that a person of ordinary skill “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such systems and familiarity with wireless standards.” Prelim. Resp. 27– 28 (citing Ex. 2005 ¶ 50). Patent Owner further states that “[a]dditional education could substitute for experience and vice versa.” Id.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00818 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23, finding a reasonable likelihood that claim 7 is unpatentable over Behbahani, Leete, and Tan under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the present record, Petitioner has made a sufficient showing as to this limitation for purposes of institution.11 Petitioner has sufficiently shown, and Patent Owner does not appear to dispute, that Behbahani switches from its high-power filter to its low-power filter in response to signal strength measurements, and that this “filter swap” varies the impedance and/or bias current in the receiver. The only disputed issues appear to be: (1) whether the claim language excludes Behbahani’s filter” slip op. at 40
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’202 patent. Pet. 75. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’202 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–72. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term for this case. See Pet. 8–10; Prelim. Resp. 28–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.c, infra. The parties may further address the meaning of the term “signal path” during the trial.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,524,202 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00817 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Behbahani, Leete, and Tan.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends a person of ordinary skill in the art “would have had a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 39–41). Patent Owner contends that a person of ordinary skill in the art “would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 28 (Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties also indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this Decision. If the parties believe that the choice of one proposal over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Based on the parties’ application of the prior art to the claims, it appears that there may be some disagreement concerning the meaning of “signal path” in this proceeding; however, neither party proposes an express construction of the term in this proceeding. See Pet. 8–10; PO Resp. 29–32. We will discuss the term “signal path” below in the context of the parties’ arguments applying this language to the asserted prior art. See § III.F.4.f, infra. The parties may further address the meaning of the term “signal path” during the trial. Patent Owner also argues that we should dismiss the Petition because Petitioner is relying on a construction that it disagreed with in the related district court litigation, citing the Board’s non-precedential decisions in Samsung Elecs. Am., Inc. v. Cobblestone Wireless LLC, IPR2024-00319, Paper 16 at 13–23 (PTAB Jun. 24, 2024) and Hologic, Inc. v. Enzo Life Sciences, Inc., IPR2018-00019, Paper 21 at 5–7 (PTAB Nov. 28, 2018). Prelim. Resp. 30–32. Patent Owner, however, relies on a flawed understanding of the Samsung case. In Samsung, the Board determined that Petitioner had failed to establish a reasonable likelihood of success because it offered and relied on a claim construction that it failed to support, disagreed with, and disparaged, and that this claim construction was not agreed upon by the patent owner or adopted by a district court. Samsung, Paper 21 at 13–23. Specifically, as the Board pointed out in Samsung, the petitioner argued and submitted testimony from its expert that its proffered construction was “expressly excluded” by the specification of the challenged patent and was “contrary to [the term’s] plain and ordinary meaning.” Id. at 14–15, 19–20. In reaching its decision in Samsung, the Board expressly “distinguish[ed] this case from situations where a petitioner relies on the ordinary meaning of a claim term, offers alternative constructions of a claim term, or relies on a construction agreed upon by the parties in the proceeding at issue.” Id. at 21. Here, unlike in Samsung, Petitioner relies on the plain and ordinary meaning of the dynamic limitation, which is agreed to by the parties in this proceeding and has been adopted by district courts in parallel litigation. We similarly find the facts in Hologic distinguishable from those presented here. See Hologic at 4 (stating, for example, that “[n]early every time [p]etitioner discusses its use in the [p]etition of [p]atent [o]wner’s proposed construction, [p]etitioner affirmatively disagrees with the construction it adopts.”). Therefore, we reject Patent Owner’s argument that Samsung and Hologic support dismissal of the Petition here. Other than the terms discussed above, we determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Director Vidal has instructed the Board that General Plastic factor 1 should not be expanded beyond Valve to apply to parties that do not have a significant relationship. See Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12 at 6 (Director Vidal, April 19, 2024) (“The majority’s Decision in this proceeding improperly expanded the discretionary principles set forth in General Plastic and Valve to apply to petitioners that are not the same and do not have a ‘significant relationship.’”). Moreover, Director Vidal has instructed that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Id. We determine that the first General Plastic factor does not favor exercising discretion to deny institution of inter partes review. This is Petitioner’s first petition challenging the ’825 patent. Pet. 70. Patent Owner argues that “Apple’s use of prior petitions as a roadmap ‘implicitly create[s] such a relationship’” as set forth in Valve. Prelim. Resp. 55. According to Patent Owner, “Apple’s admitted attempt to improve over issues ‘that have plagued prior invalidity challenges’ ties its interests to the prior Petitioner’s aims.” Id. Under the circumstances in this case, we disagree with Patent Owner’s arguments. There is no evidence in the record that Petitioner has any significant relationship with Lenovo or Samsung—for example, that Petitioner is a co-defendant with either of them or was accused of infringing the ’825 patent based on the same product. See Valve at 9–10. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, create a significant relationship with any of the prior petitioners. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the Petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. Nor did the Examiner address Leete. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the proposed grounds, which detail how the challenged claims read on these references over the combination of Behbahani, Leete, and Tan. See Pet. 18–68. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani, Leete, and Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied the second part of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani, Leete, and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,129,825 - Apple Inc. v. Theta IP, LLCInstitutedPTAB · Nov 25, 2024 · IPR2024-00820 · APJ Aaron W Moore · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–6, and 8–11 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over Behbahani and Tan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“To the extent Patent Owner is suggesting that considerations such as those set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential Section II.B.4.i) support denial of institution, we are unpersuaded because the other proceedings to which Patent Owner refers did not involve the ’210 patent. We thus do not exercise our discretion to deny institution under 35” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“First, we find that Becton, Dickinson factor (c)––the extent to which the asserted art was evaluated during examination––does not favor denying the petition under Section 325(d) because the Examiner did not cite Behbahani or Tan in any rejection and did not specifically address either reference in any correspondence, other than initialing them in an IDS. For factors (e) and (f), we find that Petitioner has explained sufficiently how the Examiner allegedly erred in evaluating Behbahani and Tan, by pointing to the Proposed Grounds, which detail how the challenged claims read on these references. See Pet. 17–67. We find this sufficient to identify the “specific teachings” that were overlooked, as contemplated in Advanced Bionics, and we agree with Petitioner that the facts and discussion of Behbahani or Tan presented in the Petition warrant reconsideration of the challenged claims in view of those references. We thus find that Petitioner has satisfied step 2 of the Advanced Bionics framework by demonstrating that the Examiner may have erred by not appreciating that Behbahani and Tan teach or suggest the features of the claimed invention. For these reasons, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary for Claim 1 For the foregoing reasons, we are persuaded that Petitioner’s cited evidence and reasoning shows a reasonable likelihood that Petitioner would prevail in its contentions regarding claim 1.5 5. Remaining Claims At this stage, Patent Owner does not separately challenge Petitioner’s contentions as to claims 2–3, 5–6, and 8–11. Because we have preliminarily determined that Petitioner has shown a reasonable likelihood of prevailing in its challenge to at least one claim of the ’210 patent, we institute inter partes review on all claims and grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all” slip op. at 34
- Skill levelSkill level patent owner adoptedDecided for patent owner
“a master’s degree in electrical engineering or the equivalent, and two or more years of experience with wireless communications devices” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 10 (citing Ex. 1003 ¶¶ 38–40). Patent Owner contends that “a person of ordinary skill in the art . . . would have at least a Bachelor’s Degree in Electrical or Electronics Engineering, along with ‘approximately five years of relevant experience in the design of transceiver architecture, RF systems and components, and analog and mixed signal circuits, as well as experience in control algorithms for such system and familiarity with wireless standards’” and that “[a]dditional education could substitute for experience and vice versa.” Prelim. Resp. 27 (citing Ex. 2005 ¶ 50). Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. Given that both parties indicate that more education could substitute for less experience and vice versa, we do not see a material difference in the proposals, and thus adopt Patent Owner’s version for the purposes of this decision. If the parties believe that the choice of one formulation over the other would make a difference in the patentability analysis, they may address that during trial.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,638,210 - PTAB · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - PTAB · May 20, 2024 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 9–15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We do not agree with Patent Owner’s argument that Petitioner wrongly considered the parties’ investment in the parallel litigation as of when the Petition was filed as opposed to when the institution decision is made. Prelim. Resp. 21. Petitioner indicated that “investment in the parallel litigation will have remained low at the time of institution,” thus indicating the proper timeframe for consideration of this factor. Pet. 69. Although the parties have expended some resources in the District Court litigation, the evidence shows that the District Court has not issued any substantive orders, a Markman hearing has not yet been conducted, and expert reports have not been exchanged. Id. (citing Ex. 1035). Accordingly, this factor weighs against exercising our discretion to deny institution. Fintiv at 10; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019) (determining that “the advanced state of the district court proceeding is an additional factor that weighs in favor of denying the Petition,” where the district court proceeding was “nearing its final stages, with expert discovery ending” soon).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION In light of the foregoing, based on the current record and at this stage of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 9–15 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the grounds set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018); 37 C.F.R. § 42.108(a) (“When instituting . . . 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”). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 9–15 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial and that the trial will commence on the entry date of this decision.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (“POSITA”) at the time of the ’404 patent’s priority date would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 1-2 years of experience working with telematics systems (e.g. familiarity with wireless communications, geolocation systems, and human-computer interfaces). A greater amount of education in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience, and more years of work experience would compensate for less education. This is the appropriate level of skill, whether the claims are entitled to priority as of January 2005 or January 2019. Pet. 7–8 (citing Ex. 1002 ¶¶ 14–16). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that “no express constructions of the claims are necessary to assess whether the prior art reads on the [challenged claims]” and that “the claims should be given their plain and ordinary meaning.” Pet. 8. Patent Owner states that “at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’404 patent’s claim terms.” Prelim. Resp. 4. As Petitioner and Patent Owner do not dispute the meaning of any claim term at this time, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). We address claim interpretation to the extent necessary in our obviousness analysis below.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404
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.