- PTAB · Dec 12, 2024 · IPR2024-00986 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 3, 4, and 6 on all grounds, finding a reasonable likelihood that the claims are unpatentable over Shin despite concerns about Ground 2.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner applies Petitioner’s definition. Prelim. Resp. 10 (citing Pet. 7–8). Petitioner’s definition appears consistent with the challenged patent and the prior art of record. See Pet. 7–8. Thus, we apply that definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes giving each term its plain and ordinary meaning. Pet. 7. Patent Owner agrees. Prelim. Resp. 10. On the current record, no terms are in controversy, and the Board does not need to construe any term here.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightOther
“We agree that Petitioner’s obviousness rationale appears to be based on the challenged patent’s disclosure—at least in part. See Pet. 46–47 (citing Ex. 1001, 1:25–50), 61 (citing Ex. 1001, 2:34–40). Dr. Mark P. Mahon’s corresponding testimony relies on the same parts of the challenged patent, adding little additional technical reasoning or support from the prior art of 8 Petitioner cites “Section 5.8a.1.3.”, but the quoted passage appears in Section 5.8.1.3. Pet. 60 (emphasis added). challenged patent itself raises the possibility that Petitioner has succumbed to impermissible hindsight bias. See Zoltek Corp. v. United States, 815 F.3d 1302, 1313 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)) (discussing the “the distortion caused by hindsight bias”); see also InTouch Tech., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). Even so, the preliminary record also indicates that it may be inherent in an NB-IoT system that “DCI indicating an SC-MCCH change notification must be transmitted in a different subframe from the DCI indicating a resource for the updated SC-MCCH information.” Pet. 61. This is a factual issue best resolved on a fully developed record.” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for patent owner
“We see no basis for using China Standard Time here. “The time and date of receipt of an application filed via EFS-Web is the local time and date in USPTO headquarters in Alexandria, Virginia.” Manual of Patent Examining Procedure (MPEP) § 502.05 I.C.2 (9th ed. Rev. 07.2015, Nov. 2015) (emphasis added).7 The MPEP provides an example of how an application filed from the Pacific Time Zone would receive the filing date as of the USPTO’s local time: For example, if an applicant in California officially files a patent application with the USPTO through EFS-Web by clicking on the SUBMIT button at 10 p.m. Pacific Time in California on May 1, that application would be officially received by the USPTO at 1 a.m., local time (i.e., Eastern Daylight Time) on May 2. Accordingly, the application would receive a filing date of May 2. Id. Thus, we disagree with Patent Owner’s argument that Fujishiro is not prior art for this reason. Prelim. Resp. 28–29.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,785,764 - PTAB · Dec 12, 2024 · IPR2024-00985 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 8–14 and 16 on all asserted grounds, finding compelling evidence that the challenges could establish unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“1–5 weigh in favor of exercising our discretion to deny institution. For the reasons discussed below, we conclude that Fintiv factor 1 is neutral, factors 2, 3, and 5 weigh in favor of denial, and factor 4 weighs marginally against discretionary denial. On balance, the Fintiv factors weigh in favor of denying institution. Because the Fintiv factors favor denial of institution, we must also determine whether the Petition presents compelling merits. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or “POSITA”) would have been “familiar with wireless communications networks, equipment, and integrated circuit chips, and would have had at least a working knowledge of communication protocols used in LTE and 5G radio access networks (“RAN”).” Pet. 11–12. According to Petitioner, a POSA would have “at least a Bachelor’s degree in Electrical Engineering or an equivalent field, and at least two years of work experience in design, development, and/or testing wireless telecommunication systems” as well as “familiarity with the wireless standards and protocols related to data transmission and network management.” Id. at 12. At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 10 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Because Petitioner’s description of a POSA appears consistent with the subject matter of the ’566 patent and with the prior art of record and we apply it for purposes of this decision, with the exception of the qualifier “at least” which expand the ranges of education and experience indefinitely with no upper bound. 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).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find Patent Owner’s argument that Petitioner did not meet its obligation to explain how the claims should be construed unavailing because, on the present record, we do not find a material difference between Petitioner’s assertion in this proceeding that the claims should be given their plain and ordinary meaning and the claim constructions that Petitioner agreed to in the district court litigation. We do not find it necessary to expressly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”). We address whether the Petitioner has sufficiently shown that the cited art meets the limitations at issue infra § III.E.1.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“G. Conclusion on Compelling Merits For the reasons set forth above, we determine that Grounds 1–3 of the Petition present a compelling meritorious challenge. That is, “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. As the Director explains in OpenSky, however, this finding “should not be taken as a signal to the ultimate conclusion after trial” because “all relevant evidence likely will not have been adduced at the point of institution [and] trial should produce additional evidence that may support a determination in the Final Written Decision that unpatentability has not been adequately proven.” OpenSky, IPR2021-01064, Paper 102 at 49– 50. IV. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the accompanying evidence, we find that the Petition presents compelling evidence of the unpatentability of the challenged claims. Accordingly, we grant Petitioners request that we institute inter partes review of claims 8–14 and 16 of the ’566 patent.” slip op. at 25
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 10,601,566 - PTAB · Dec 11, 2024 · IPR2024-00951 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1–5 on all petition grounds, finding compelling evidence of unpatentability based on Wang and Yang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review under particular circumstances, but not requiring institution under any circumstances).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. On balance, we conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether, on this preliminary record, the merits are compelling. CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5; Guidance Memo 3–5.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“In addition, Petitioner asserts that, to the extent Wang does not disclose limitation 3.3, it would have been obvious over Wang and the POSA’s knowledge of the art. According to Petitioner, and Petitioner’s declarant, Dr. Mahon, it was “well known . . . that TBs could be . . . subdivided in CBs or CBGs and that UEs could transmit HARQ-ACK bits on either a TB or CBG basis to improve the efficiency of the system and potentially prevent the need for retransmission of an entire TB whenever a NACK signal is received.” Pet. 33–34; Ex. 1003 ¶ 281. Petitioner asserts that it was also known that it was desirable to transmit one HARQ-ACK per TB in some instances and one HARQ-ACK bit per CBG in other instances. Id. Petitioner explains that there are a limited number of ways to “distinguish between one HARQ-ACK transmission method and another,” and therefore the POSA would “immediately recognize that one such distinguishing characteristic to devise such a system around is search space configuration, such that one HARQ-ACK bit is transmitted per TB in one search space configuration (e.g., CSS), while one HARQ-ACK bit is transmitted per CBG in another search space configuration.” Id.” slip op. at 25
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,531,443 - PTAB · Nov 12, 2024 · IPR2024-00886 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution for claims 9–16 under § 314(a), finding the Fintiv factors favored denial and neither obviousness challenge presented compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or Ingale in view of Jung. Pet. 18–51. For the reasons discussed below, we determine that Petitioner’s showing does not rise to the level of “compelling merits” according to the Office’s current guidance and Board precedents. CommScope at 3–4 (quoting Guidance Memo, 4) (“[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges ‘in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”); OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49–50 (PTAB only ‘plainly lead to a conclusion that one or more claims are unpatentable’ . . . if it is highly likely that the petitioner would prevail with respect to at least one challenged claim”). 1. Petitioner’s Showing for Claim 9 Below we provide an element-by-element analysis of Petitioner’s obviousness showing for claim 9. After considering the evidence supporting Petitioner’s obviousness showing, and Patent Owner’s arguments and evidence as to why Petitioners’ obviousness showing is deficient, we consider whether the totality of the evidence rises to the level of compelling merits.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For the reasons set forth above, and even if we consider Petitioner’s proposed rationale for combining Ingale and Jung to be supported by sufficient rational underpinnings (see e.g., Pet. 24–27), neither Jung nor Ingale, either individually or in the proposed combination set forth by Petitioner teach or suggest limitation 9.6 of claim 9 so as to rise to a compelling, meritorious showing for claim 9. 4. Remaining Claims Petitioner’s arguments and evidence for independent claim 13 (Pet. 58–59) and dependent claims 10–12 and 14–16 (id. at 51–57, 59–60) are substantially similar to Petitioner’s arguments and evidence for claim 9 and are unopposed at this stage by Patent Owner (except for the issues discussed above with respect to independent claim 9) (see e.g., Prelim. Resp. 15). Accordingly, Petitioner’s showing for claims 10–16 do not differ or deviate from the showing with respect to independent claim 9 so as to rise to the level of a compelling, meritorious showing, either for independent claim 9, or any of claims 10–16.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 6–7 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Petitioner’s description of a POSITA appears consistent with the subject matter of the ’557 patent and with the prior art of record, we apply it for purposes of this Decision. 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).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,557 - Microsoft Corporation / HP Inc. et al. v. Litl LLCAdverse judgmentPTAB · Oct 10, 2024 · IPR2024-00456 · APJ Garth D Baer · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–9, 15–22, and 24–27.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request judgment against itself at any time during a proceeding,” and states that “disclaimer of a claim such that the party has no remaining claim in the trial” will be construed as a request for adverse judgment. Under these circumstances, we grant Patent Owner’s motion for adverse judgment. ORDER It is: ORDERED that Patent Owner’s Motion for adverse judgment (Paper 28) is GRANTED, and FURTHER ORDERED that judgment is entered against Patent Owner with respect to claims 1–9, 15–22, and 24–27 of the ’888 patent.” slip op. at 2
NonePatents in suitUS 8,612,888 - PTAB · Oct 3, 2024 · IPR2024-00648 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR of claims 1–30 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented by the parties, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of claims 1–30 of the ’462 patent is unpatentable.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Design, Eligibility). At this point in the proceeding, we interpret the “in response to” limitation of claim 1 to mean that pembrolizumab is administered to a patient after the patient has been determined to be microsatellite instability high or DNA mismatch repair deficient, regardless of whether pembrolizumab is also administered to other patients. The record is devoid of evidence that one of ordinary skill in the art would have understood treating a patient “in response to” the determination that the patient has a condition to exclude the same treatment of other patients, such as the treatment of control patients not having the condition.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“5002). Dr. Neugut’s testimony supports Petitioner’s argument that the cited teachings of Brown and Duval, as well as other references, would have motivated a person of ordinary skill in the art to obtain the results of the MSI-H Study Record. See Ex. 1003 ¶¶ 124, 130, 132, 136. Petitioner argues further that Brown and Duval would have motivated one of ordinary skill in the art to obtain the results of the MSI-H Study Record by treating patients with common types of MSI-H cancers, including endometrial, small bowel, and gastric cancers. Pet. 42–43 (citing Ex. 1003, ¶ 136). Petitioner argues further that the state of the art, as demonstrated by Brown and Duval, as well as other references, would have provided one of ordinary skill in the art with a reasonable expectation of success because physicians were actively treating patients with cancers that were known to be MSI-H with PD-1 inhibitors. Pet. 43 (citing Ex. 1016; Ex. 1017; Ex. 1003 ¶¶ 131–132). According to Petitioner, these other references would have “independently urged” those of ordinary skill in the art to treat MSI-H cancer with PD-1 inhibitors or other immunotherapy, such as pembrolizumab, and would have given them a reasonable expectation of success. Pet. 44–45. Petitioner cites, along with other references, Pernot, which states “[colorectal cancers] associated with MSI could lead to a more intense immune response, but also to specific immunoregulatory phenomena, making them good candidates for immunotherapy.” (Ex. 1006,3 3741; see Pet. 43.) Petitioner also cites Champiat, which states that” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the ’462 patent would have been a medical doctor or a professional in a related field with at least five years of experience with treating cancer. Pet. 11 (citing Neugut Decl., Ex. 1003 ¶ 19). Petitioner argues further that the ordinarily skilled artisan would have had experience in or access to a person with knowledge of clinical studies for therapeutics and how they work and to a pathologist with comparable experience. Id. Patent Owner, having not entered a response, does not dispute Petitioner’s proposal about the POSA’s qualifications on this record.. For this Decision, we adopt and apply Petitioner’s proposal above, which is supported by Dr. Neugut’s testimony and does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 8
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,643,462 - Freewheel Media, Inc. v. Intent Iq, LLCInstitution deniedPTAB · Oct 3, 2024 · IPR2024-00424 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution of review of the challenged claims under § 314(a), finding the lower-ranked petition did not justify a second set of petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“large number of claims alone is not sufficient to justify the filing of the second set of petitions when the first set already covers all 152 claims of the ʼ260 patent. We therefore turn to Petitioner’s reasons for why it filed the second set of petitions. In this regard, Petitioner identifies three primary “[m]aterial differences between the petition pairs.” Paper 3, 2–5. The first is that the second set of petitions relies on a different set of references, based on Madhavan, rather than Baig. Id. at 2. The second material difference relates to possible priority date issues, and the third relates to possible claim construction issues. Id. We determine that none of these “material differences” are sufficient to justify filing the second set of petitions, including this petition. See November 2019 Consolidated Trial Practice Guide (“CTPG”) 59, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“[O]ne petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. . . . The Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.”).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“IPR2024-00421 and IPR2024-00422, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review in this proceeding. IV. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of the challenged claims of the ’260 patent is not instituted.” slip op. at 11
Discretionary denialPatents in suitUS 7,861,260 - Freewheel Media, Inc. v. Intent Iq, LLCInstitution deniedPTAB · Oct 3, 2024 · IPR2024-00423 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution of inter partes review because Petitioner did not justify its lower-ranked second set of petitions challenging claims already covered by higher-ranked petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“We determine that none of these “material differences” are sufficient to justify filing the second set of petitions, including this Petition. See November 2019 Consolidated Trial Practice Guide (“CTPG”) 59, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“[O]ne petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast” slip op. at 8
Discretionary denialPatents in suitUS 7,861,260 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Oct 2, 2024 · IPR2024-00422 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1, 6, 8–10, 21, 23–26, 29–34, 38–40, 42, 43, 45–53, 55, 59–61, 63–70, 76, 81, 82, 85, 87–89, 100, 102–104, 107–115, 117, 120–124, 126, 129–136, 142, 145–147, 149, and …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of” slip op. at 2
- Parallel petitionsDecided for petitioner
“In light of the guidance provided by the Consolidated Trial Practice Guide, we are persuaded by Petitioner’s argument that we should consider this petition along with the petition in IPR2024-00421. Both petitions rely on the same primary references, Baig, Costa, and either Zwicky or Banga690. Because the ’260 has a large number of claims (152) spanning over 10 columns, this is one of those situations where more than one petition is necessary for Petitioner to address each of those claims. We do not find Patent Owner’s argument regarding the number of claims asserted in the litigation to be persuasive. See Prelim. Resp. 7 (“Importantly, Petitioner does not allege that ‘the patent owner has asserted a large number of claims in litigation . . . .’” (quoting CPTG 59)). First, we have reviewed the complaint Patent Owner asserted against Petitioner and do not see any limits on which claims are asserted. See Ex. 3001. Second, Patent Owner has not identified any claims that it is not asserting. See Prelim. Resp. Therefore, based on the current record, Patent Owner is asserting all 152 claims in litigation. Moreover, we are not aware of any legal authority that limits inter partes review to only claims challenged in litigation. Accordingly, we decline to exercise our discretion to deny institution of this petition.14” slip op. at 14
- BurdenDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. Unlike Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition only has, at most, two grounds for each claim (see Pet. 4). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of the declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art would have had “a degree in computer or electrical engineering, computer science, or a similar discipline, and two years of experience with the design and/or implementation of network-based content delivery systems and Internet advertising.” Pet. 6 (citing Ex. 1002 ¶¶ 144–49). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’260 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.12” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Oct 2, 2024 · IPR2024-00421 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 11–20, 22, 26–28, 35–38, 41, 44, 54, 56–58, 61, 62, 71–75, 77–80, 83, 84, 86, 90–99, 101, 105, 106, 116, 118, 119, 125, 127, 128, 137–141, 143, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of” slip op. at 2
- Parallel petitionsDenied
“states that “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate” and “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Prelim. Resp. 5 (emphasis omitted, citing CTPG, 59). Patent Owner also argues that because Petitioner “has not and cannot justify” its four parallel petitions, the Board should deny institution in the instant proceeding. Prelim. Resp. 4–5; see also id. at 6 (“Petitioner fails to justify why all four Petitions, filed on the same day and challenging the same independent claims, are all necessary and appropriate.” (emphasis omitted)). Patent Owner also argues that (1) different prior art does not justify multiple petitions, (2) because Patent Owner “expressly stipulates that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner,” there are no potential priority issues, and (3) Petitioner is speculating as to the potential for disputes around claim construction. Id. at 6–7. Because this is the first ranked petition (Paper 3, 1–2), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to four petitions,14 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 13
- BurdenDecided for petitioner
“We are not persuaded by Patent Owner’s arguments. Unlike Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition only has, at most, two grounds for each claim (see Pet. 4). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of the declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art would have had “a degree in computer or electrical engineering, computer science, or a similar discipline, and two years of experience with the design and/or implementation of network-based content delivery systems and Internet advertising.” Pet. 6 (citing Ex. 1002 ¶¶ 144–49). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’260 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.12” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,861,260
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.