- Apple Inc. v. Ferid AllaniInstitution deniedPTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(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.” 35 U.S.C. § 314(a). 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). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,271,877 - Alpinestars S.P.A. / Alpinestars USA Inc. v. Dainese S.P.A.Institution deniedPTAB · Oct 15, 2025 · IPR2025-00750 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution for claims 1–22 because Petitioner did not show a reasonable likelihood of prevailing on any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not shown a reasonable likelihood of establishing that one of ordinary skill in the art would have combined EP’536 (with or without Hatton) and CN’180 in the proposed manner, Petitioner has not shown a reasonable likelihood of prevailing with respect to claims 1 and 18. 5. Claims 2–17 and 19–22 Because Petitioner has not shown a reasonably likelihood of prevailing with respect to independent claims 1 and 18, Petitioner also has not shown a reasonable likelihood of prevailing with respect to the claims that depend therefrom (claims 2–17 and 19–22).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer its own definition of the level of ordinary skill or dispute Petitioner’s definition. See generally Prelim. Resp. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“For purposes of our analysis, we need only address the meaning of “planar structure,” and only to note that this limitation requires that all portions of the casing body, when inflated against the first mesh portion, second mesh portion, and tie elements, “form a planar structure” when the casing body is inflated. This is evident from both the claim language and the written description of the ’065 patent. Limitation [1e] of claim 1 recites that in the inflated condition, “said portions of the casing body” are “inflated against said first mesh portion, said second mesh portion, and said tie elements.” We understand “said portions of the casing body” to refer to all of the portions of the casing body. Likewise, “said first mesh portion, said second mesh portion, and said tie elements” refers to the entire mesh structure recited in limitation [1a]. Thus, this limitation requires all of the casing-body portions to inflate against the entire mesh structure to form the “planar structure.” This reading is consistent with the Specification. The Specification teaches that “[t]he first mesh portion and the second mesh portion together with the tie elements determine with the casing body the final shape of the inflatable element,” which “can reach a generally flat and planar final shape.” Ex. 1001, 4:19–23; see also id. at 4:59–5:3 (teaching that the casing body inflated within the mesh structure results in a “globally planar structure”). Here, “inflatable element” refers to the entire structure because it is comprised of the mesh structure and casing body. Id. at 3:11–18. Thus, the entire structure, when inflated, is “generally flat and planar.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“portions of the casing body, when inflated against the first mesh portion, second mesh portion, and tie elements, “form a planar structure” when the casing body is inflated. This is evident from both the claim language and the written description of the ’065 patent. Limitation [1e] of claim 1 recites that in the inflated condition, “said portions of the casing body” are “inflated against said first mesh portion, said second mesh portion, and said tie elements.” We understand “said portions of the casing body” to refer to all of the portions of the casing body. Likewise, “said first mesh portion, said second mesh portion, and said tie elements” refers to the entire mesh structure recited in limitation [1a]. Thus, this limitation requires all of the casing-body portions to inflate against the entire mesh structure to form the “planar structure.” This reading is consistent with the Specification. The Specification teaches that “[t]he first mesh portion and the second mesh portion together with the tie elements determine with the casing body the final shape of the inflatable element,” which “can reach a generally flat and planar final shape.” Ex. 1001, 4:19–23; see also id. at 4:59–5:3 (teaching that the casing body inflated within the mesh structure results in a “globally planar structure”). Here, “inflatable element” refers to the entire structure because it is comprised of the mesh structure and casing body. Id. at 3:11–18. Thus, the entire structure, when inflated, is “generally flat and planar.”” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,012,065 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–21 because the petition did not show a reasonable likelihood that Belanger-Halevy taught limitation [1B].
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“variable data database’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 94; Ex. 2001 ¶¶ 68, 70). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties.” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties based on the SO-class identified for the form would have been recognized by a POSA as what the ’342 patent refers to as a universal variable map.” Ex. 1003 ¶ 98 (citing Ex. 1001, 17:48– 52). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers from multiple different websites to each other in the form database, because field identifiers are mapped to the same SO-properties associated with an SO-class.” Id. (emphasis omitted). We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’342 patent. In column 17, lines 48–52, the ’342 patent explains that fields or variables may be part of forms, and variations of the data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:48–52. While this portion of the ’342 patent indicates that forms may include variations on fields or variables, it does not describe linking or mapping variables to one another. Ex. 2001 ¶ 75 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’342 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1B]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1B] of the ’342 patent.” slip op. at 5
NonePatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, 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.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - Apple Inc. v. DH International Ltd.Institution deniedPTAB · Jun 25, 2025 · IPR2025-00173 · APJ Brian P Murphy · IPR · Institution
Institution was denied for claims 1–13 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (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, and the evidence of record, for the reasons set forth below, we conclude the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’333 patent. Accordingly, we do not institute an inter partes review of claims 1–13 of the ’333 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“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. We adopt the parties’ agreed level of ordinary skill in the art, which is consistent with the description in the ’333 patent and the prior art of record.” slip op. at 10
- BurdenNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The Petition does assert an obviousness theory within the analysis of the “control device” limitation [1(b)]. Pet. 25–35 (citing Ex. 1003 ¶¶ 85– 109). The Petition asserts that a “POSITA would have been motivated to implement McGregor’s device pursuant to Palmer such that the security code would be automatically transmitted when the device detects the receive the security code.” Pet. 28; see also id. at 31 (“A POSITA would have been motivated to implement Palmer’s (1) RF field detection and handshake processes and (2) Palmer’s transceiver hardware in McGregor’s device.”) (citing Ex. 1003 ¶¶ 95–105). We find the Petition’s obviousness theory to be inherently inconsistent and non-specific with regard to the “data conveyance switching element” recited in limitation [1(e)].” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,628,333 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · Jun 2, 2025 · IPR2025-00131 · APJ Robert L Kinder · IPR · Institution
The Board denied institution of IPR on claims 1–20 because a district court had entered judgment finding all challenged claims patent ineligible under § 101.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the Challenged Claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. Thus, consistent with Hulu, we deny institution of inter partes review because the District Court has entered judgment determining all Challenged Claims of the ’785 patent invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 12
Discretionary denialPatents in suitUS 10,846,785 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · May 29, 2025 · IPR2025-00133 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of IPR2025-00133 because a district court had found all challenged claims patent-ineligible, making review administratively inefficient.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“B. Discretionary Denial Based on Hulu The Hulu decision held that “[b]ecause the patent claims already stand invalid, it is unnecessary to institute another proceeding to review them for patentability under other grounds.” Hulu at 2. The decision reasoned that “[i]n the event the Federal Circuit reverses the district court’s decision, Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3 (remanding the panel’s institution decisions and denying institution). The Hulu rationale is grounded in the statutory estoppel provisions of 35 U.S.C. § 315(e) that apply only to a “final written decision;” statutory estoppel does not prevent a petitioner from raising the same invalidity grounds in district court if the petition is denied. See Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035, 1041 (Fed. Cir. 2022) decision.”). Even if inter partes review is instituted but later terminated with respect to a petitioner, e.g., after settlement, no statutory estoppel attaches to the petitioner, a real party in interest, or privy. See 35 U.S.C. § 317(a) (“If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review.”). Thus, discretionary denial would not eclipse Petitioner’s ability to assert invalidity of the Challenged Claims in the District Court litigation. The Petition explains that the District Court granted a Motion to Dismiss and found all of the Challenged Claims to be patent ineligible under 35 U.S.C § 101. 130 Pet. 2 (citing Ex. 1025, 10, 14; DKR Consulting LLC v. Shopify, Inc., Case No. 2:23-cv-06904 (C.D. Cal.)); see also Ex. 3001 (District Court judgment stating “[p]ursuant to this Court’s Order Granting Defendant’s Motion to Dismiss, it is ordered that judgment is entered on all claims in favor of Defendant Shopify, Inc.”). In the Show Cause Paper, Petitioner confirms the scope of the District Court Judgment as applying to all of the challenged claims of the ’678 and ’237 patents. See Show Cause Paper at 6 (“All challenged claims are subject to the district court’s Order and Judgment.”). All of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the challenged claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. because the District Court has entered judgment determining all challenged claims of the ’678 and ’237 patents invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“I. CONCLUSION For the reasons given above, we deny the Petitions in the 130 and 133 IPRs. Therefore, we do not institute inter partes review. II. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petitions in IPR2025-00130 and IPR2025-00133 are denied, and inter partes review is not instituted.” slip op. at 15
Discretionary denialPatents in suitUS 11,488,237 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · May 29, 2025 · IPR2025-00130 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of IPRs challenging claims 1–20 of the ’237 patent and claim 7 of the ’678 patent because a district court had held all challenged claims patent-ineligible.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Dismiss and found all of the Challenged Claims to be patent ineligible under 35 U.S.C § 101. 130 Pet. 2 (citing Ex. 1025, 10, 14; DKR Consulting LLC v. Shopify, Inc., Case No. 2:23-cv-06904 (C.D. Cal.)); see also Ex. 3001 (District Court judgment stating “[p]ursuant to this Court’s Order Granting Defendant’s Motion to Dismiss, it is ordered that judgment is entered on all claims in favor of Defendant Shopify, Inc.”). In the Show Cause Paper, Petitioner confirms the scope of the District Court Judgment as applying to all of the challenged claims of the ’678 and ’237 patents. See Show Cause Paper at 6 (“All challenged claims are subject to the district court’s Order and Judgment.”). All of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the challenged claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. because the District Court has entered judgment determining all challenged claims of the ’678 and ’237 patents invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“I. CONCLUSION For the reasons given above, we deny the Petitions in the 130 and 133 IPRs. Therefore, we do not institute inter partes review. II. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petitions in IPR2025-00130 and IPR2025-00133 are denied, and inter partes review is not instituted.” slip op. at 15
Discretionary denialPatents in suitUS 11,455,678
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.