• Crowdstrike, Inc. v. Gosecure, Inc.Institution denied
  PTAB · May 6, 2025 · IPR2025-00067 · APJ Garth D Baer · IPR · Institution

  The Board denied institution for claims 1–23 because the cited art did not teach or suggest creating the claimed fingerprint at the virtual machine monitor.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’697 patent is unpatentable. We therefore do not institute trial on any challenged claims or grounds raised in the Petition.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 10

  Claim construction§ 103 obviousness
  Patents in suitUS 9,106,697
• Google LLC v. Metarail, Inc.Institution denied
  PTAB · Apr 24, 2025 · IPR2024-01272 · APJ Brian P Murphy · IPR · Institution

  The Board denied institution because Google did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on 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 nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 14

  • Skill levelSkill level board ownOther

    “In determining the level of ordinary skill in the art, various factors may be considered, 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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “While [Dr. Fox] asserts that Oldham’s external engine is the required “networked data source,” he does not identify any teaching in Oldham that there are any “field identifiers” in Oldham’s external engine. Dr. Fox then goes on to argue that “POSAs would have recognized that the SO-properties mapped to the keywords are determined ‘field identifiers of the networked data source stored in the universal variable data database’ based on the dynamic data because the SO-properties for each class are defined by the form engine and mapped to corresponding fields from various forms stored in the form database.” EX1003, ¶ 102. First, Halevy’s SO-properties obviously cannot be “field identifiers” of Oldham’s external engine, because Halevy’s SO-properties do not come from Oldham’s external engine. Rather, they are generated in Halevy’s system as part of the “database schema” of Halevy’s form database. See EX1006, [0038] (“In one embodiment of the present invention, the database describes web sources in terms of an ontology of classes and properties, which is referred to as the ‘search ontology’ (SO).”). In addition, Halevy’s SO-properties are not “field identifiers” at all. Rather, the SO-properties are simply search filters that assist Halevy’s search engine in determining a form’s degree of relevancy to the user’s keyword search query. See EX1006, [0137] (“[T]he system performs a lookup based on the structured query in the form database to identify forms of interest (step 608) and ranks these forms (step 610).”). Also I note that Dr. Fox argues elsewhere in his declaration that SO-properties are “normalized variables,” which even he recognizes are different from “field identifiers.” See, e.g., EX1003, ¶ 101 (“Halevy’s form engine determines field identifiers . . . by mapping keywords in the query to SO-properties (i.e., normalized variables) . . . .”). As described in the ’734 patent, “normalized variables” are used to create associations between field identifiers of different forms, but they are not themselves “field identifiers.” See EX1001, 15:65-16:3 (“In this way, once a site’s category is defined, the variable mapping exercise can be simplified to match which variables or identifiers match up with which normalized variable . . . .”). Thus, Dr. Fox fails to show any teaching or suggestion in the combination of Oldham and Halevy of the claim limitation “determining . . . field identifiers of the networked data source stored in the universal variable data database.” Ex. 2001 ¶¶ 59, 61–64 (underlining added). We adopt Dr. Malek’s testimony and reasoning above as our own.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “b. Halevy’s schema-mapping search engine Although Halevy’s schema-mapping system uses a common set of SO-properties for the form fields in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping for “mapping,” linking, or integrating the field identifiers (parameter names) of different forms on different websites to one another to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 30

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,152,734
• Google LLC v. Metarail, Inc.Institution denied
  PTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’378 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. 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))).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,633,378
• Phison Electronics Corporation v. Vervain, LLCInstitution denied
  PTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024).” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36

  § 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,830,546
• Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdInstituted
  PTAB · Jan 28, 2025 · IPR2024-01048 · APJ Mary C Hoffman · IPR · Institution

  The Board instituted IPR on all challenged claims and all four grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We begin our analysis with independent claim 1. Considering these factors, we preliminarily determine that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable as obvious over Zhang, Fillebrown, and Pasanen, for the reasons explained below.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Petitioner argues that limitation 1c is taught by the combination of Zhang with Fillebrown. Pet. 18. Petitioner identifies Zhang’s teaching of transmitting commands and media content from the mobile device to helper servers via a wireless network, WLAN. Pet. 16–18 (citing Ex. 1004, 3:25– 60, 4:1–8, 4:32–50, 7:1–14, 8:13–22; Ex. 1003 ¶¶ 103, 104, 114–118). Acknowledging that Zhang does not expressly teach an intermediate routing device, Petitioner identifies Fillebrown’s intermediate wireless router (wireless router 120) for providing network range extension by amplifying routed signals. Id. at 19–22 (citing Ex. 1005 ¶¶ 16, 34, 49, 51, 57, 61). Petitioner contends a POSITA would have been motivated to modify Zhang to route data via an intermediate wireless router pursuant to Fillebrown to provide network range extension, and that such a modification would have had a reasonable expectation of success because Zhang and Fillebrown teach the same network setup (i.e., WLAN using a wireless protocol/standard such as IEEE 802.11 or Home RF). Pet. 22–23 (citing Ex. 1003 ¶¶ 109–111)” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties do not propose any express claim construction. Pet. 4; see generally Prelim Resp. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We preliminarily disagree with Patent Owner. Although the claim lists step 1b before step 1d, method steps are not ordinarily construed to require a specific order of performance unless the claims or Specification directly or implicitly require that specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Nothing in the express claim language precludes performing step 1d before step 1b, as in Zhang. For example, the claim does not contain temporal terms, like “then” or “next,” nor does the claim otherwise specify that step 1b must precede step 1d. Although Patent Owner points out that a term of step 1d (i.e., the one more available devices) derives antecedent basis from text in step 1b (i.e., one more available devices), this alone does not directly or implicitly require performing step 1b before step 1d. Prelim Resp. 6–7 (citing Ex. 1002, 240, ’648 patent prosecution history). Nor does the Specification require performing the step of identifying devices as available before the step of wirelessly signaling those devices or even that the steps be mutually exclusive. For example, there are no statements that this step order is important, nor disclaimer of any other order, nor any prosecution history indicating a surrender of any other order. Moreover, according to the Specification, announcer 30, which is the component that identifies devices as available prior to the wirelessly signaling, is only “preferably provided.” Ex. 1001, 7:28–31. Even assuming Patent Owner were correct that step 1b must precede step 1d, Patent Owner’s position that device(s) must be identified as available does not appear to be commensurate with the claims. According to its plain meaning, limitation 1b does not appear to require identifying devices as available; the claim merely requires identifying “available devices.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). In other words, the claim does not appear to require identifying (i.e., determining) whether devices are available but merely requires identifying devices that happen to be available. According to our preliminary understanding, Zhang’s mobile device 1) discovers (identifies) connected available and unavailable helper servers, and then 2) sends (wirelessly signals) service requests to compatible available and unavailable helper servers. Ex. 1004, 3:44–4:8, 6:51–7:13. Thus, Zhang identifies and then wirelessly signals available devices (Zhang also identifies and then wirelessly signals unavailable devices). As such, we preliminary determine that Zhang meets the claim language “identifying one or more available devices” and “wirelessly signaling the one or more available devices.”” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,547,648
• Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdInstitution denied
  PTAB · Jan 28, 2025 · IPR2024-01047 · APJ Stacey G White · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Patent Owner’s definition of a person of ordinary skill in the art is similar to Petitioner’s definition with some variation in the amount of education and specificity as to the experience required. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. We note, however, that our determination in this proceeding would be the same under either formulation.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a [person of ordinary skill in the art]” and does not propose construction of any claim term. Pet. 4. Patent Owner also does not propose construction of any claim term. See generally, Prelim. Resp. Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “feature of scanning a wireless communication network by the mobile device receiving the streaming data for re-routing, to identify devices connected to the wireless network, are identified as capable to handle the routed media content.” Prelim. Resp. 5–6 (emphasis added) (citing Ex. 1002, 237–238). Thus, we understand the recited language to require scanning to find devices that have been identified as compatible, not just scanning to find devices and later determining which of those devices, if any, are compatible. Zhang, on the other hand, scans to find devices in the network, but that scan does not seek out devices identified as compatible. Specifically, Zhang scans to find its “helper environment” which is composed of “devices around them.” Ex. 1004, code (57); see also id. 2:16–20. The first step of Zhang’s process is to find “a local device [that] offers helper service.” Id. at 3:62–63. In the next step, Zhang then interrogates the device it scanned for in order to find out whether that device offers the necessary service. Id. at 3:63–4:5. In other words, Zhang is not scanning for compatible devices, but rather it is scanning for any device around it and then asking whether the device provides the necessary service. We find this to be insufficient because the claim is not merely seeking to identify a compatible device, but rather it is scanning “to identify a plurality of devices, identified as compatible to handle said media content.” Thus, for these claims it is not enough that the network be scanned for devices; instead, the network must be scanned for devices “identified as compatible.” The inclusion of Rofheart does not address this issue. Rofheart is relied upon to teach “that a local device identifies and connects with a plurality of remote devices.” Pet. 29. According to Petitioner, one of ordinary skill in the art would have used Rofheart’s teaching to improve Zhang by adding “the benefit of providing users control to select one or more of a plurality of devices, rather than always connecting to the first identified available compatible device, as taught by Zhang.” Id. As such, neither of the cited references addresses the recited scanning for devices identified as compatible.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,699,223
• Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution denied
  PTAB · Jan 27, 2025 · IPR2024-01049 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 22–24 would have been obvious over Chihara, BluetoothSpec, Everett, and Chang.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review. CONCLUSION For the reasons above, Petitioner has not shown that there is a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’866 patent is unpatentable. Therefore, we deny the Petition. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “streaming device is receiving rerouted data from surrounding media handling devices, rather than rerouting data to surrounding media handling devices.” Pet. 19–20. This is in accord with the specification of the ’866 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1038, 7:22– 24 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. 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))). evidence to justify such a departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’866 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives streaming or media data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted streaming data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 22, which requires the streaming device (phone 11B) to indicate its availability to receive streaming data rerouted from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,711,866
• Apple Inc. v. Smith Interface Technologies, LLCInstituted
  PTAB · Jan 22, 2025 · IPR2024-01090 · APJ Nathan A Engels · IPR · Institution

  The Board instituted IPR on claims 1–3, 21, 29–31, 42–44, 54, and 62–65 based on the §103 combination of Blumenberg, Bhumkar, and Griffin.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Patent Owner may bear a burden of production, however, to show that the Challenged Claims are entitled to the benefit of an earlier filing date. Id. at 1379–80.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “On this record, we preliminarily agree with Petitioner that the claim limitations amount to a combination of known elements that a POSITA could have combined to achieve predictable results. See Intel, 21 F.4th at 799–800 (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option). Among other reasons, the preliminary record supports Petitioner’s arguments that combining the teachings of Blumenberg, Bhumkar, and Griffin amounts to applying known solutions in the field of computer interfaces with predictable outcomes. See Pet. 12–18. As noted above, we encourage the parties to address the scope and meaning of the “when” limitations as a matter of claim interpretation, but we do not currently understand the plain language of Limitation [1.o] to require that the “portion of the second web page” or “menu” is displayed only after expiration of the “second user-configurable predefined duration,” termed by Patent Owner the “Alternative Modification.” Again, we encourage the parties to fully address this issue as a matter of claim construction. We additionally note that, even if we were to interpret the claims to require that the recited functions of Limitation [1.o] occur only the “prerequisite elements” are satisfied, we are still preliminarily persuaded by Petitioner’s arguments that combined teachings of the prior art satisfy the claim elements as a mere combination of known elements combined according to their known functions with predictable results.” slip op. at 27

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “scenarios. Pet. 1 (characterizing three claimed scenarios as (i) an “inadvertent” contact, (ii) a “tap” contact, and (iii) a “hold” contact), 4 (“Independent Claims 1 and 42 outline three scenarios regarding a user’s contact with a touch screen device”); Prelim. Resp. 3 (“With respect to claim 1, these three scenarios include: . . . .”); see Ex. 2001 ¶¶ 28 (“As recited in claim 1, the three different claimed functionalities are executed ‘when’ the prerequisite elements are met (described as three scenarios by Dr. Cockburn.”) (citing Ex. 1001, 102:50–103:55; Ex. 1003 ¶¶ 33–35), 29–32 (describing the first, second, and third scenarios). In substance, the parties’ dispute appears to concern whether the plain language of the claims requires that a recited function must be performed only after or in response to expiration of a threshold (and other prerequisites), as opposed to requiring a function that begins before and continues after expiration of a threshold. Notably, dependent claim 3 recites: “The electronic device of claim 1, wherein the electronic device is configured such that the first feedback that is perceptible by touch is output prior to the display of the menu.” Ex. 1001, 104:1–4 (emphasis added). Given that independent claim 1 is necessarily broad enough to include claim 3, it seems on this record that the functions recited in Limitation [1.o] necessarily can happen at different times, as opposed to, for example, only responses that are triggered by the so-called “prerequisite elements.” We encourage the parties to address this issue as a matter of claim interpretation in future briefing. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)).” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,725,581
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202

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.