- PTAB · May 13, 2026 · IPR2025-01444 · APJ George R Hoskins · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed the entire patent term, entering judgment against claims 1–6.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during an inter partes review proceeding. See 37 C.F.R. § 42.73(b). In addition, “[a]ctions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; [and] (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Because Patent Owner has explicitly requested adverse judgment against itself pursuant to Rule 42.73(b), and has disclaimed the entire term of the ’584 patent, Patent Owner’s request for adverse judgment is granted. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Request for Adverse Judgment is granted; and FURTHER ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1–6 of the ’584 patent.” slip op. at 3
NonePatents in suitUS 7,547,584 - Tableau Software, LLC v. Icharts LLCAll claims unpatentablePTAB · May 7, 2026 · IPR2024-01387 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–16 are unpatentable under the instituted obviousness grounds, including Becerra, the QlikView Manuals, and combinations with other references.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“why it is trustworthy and how it archives dates by which the webpages were accessible, as this is an information resource on which librarians reasonably rely. See FED. R. EVID. 703. We agree with Petitioner that Dr. Hall-Ellis does have personal knowledge of the facts stated in the remaining testimony (e.g., what she actually downloaded from websites), and that FEDERAL RULE OF EVIDENCE 602 is inapplicable to her testimony offered as an expert. See Pet. Opp. 5–6 (citing Ex. 1030 ¶¶ 26, 29–32, 35, 37–39). We find her testimony to be relevant to the issues presented and specifically to whether the QlikView documents were publicly accessible. We also find no danger that the testimony would confuse the issues or mislead the Board or present unfair prejudice to Patent Owner. Accordingly, we deny Patent Owner’s Motion as to the remaining portion of Dr. Hall-Ellis’s declaration.” slip op. at 92
- Strike new argumentNew argument disregardedGranted
“FURTHER ORDERED that Petitioner’s Motion to Strike portions of Patent Owner’s Reply on its Motion to Exclude (Paper 32) is granted; and” slip op. at 102
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“1. Motivation to Combine Becerra and Couckuyt Petitioner argues that a person of ordinary skill in the art would have been motivated to combine the teachings of Becerra and Couckuyt because such a person would have recognized that Couckuyt discloses useful techniques of assigning data to Becerra’s charts, including assigning data to each axis. Pet. 34 (citing Ex. 1005 ¶¶ 19, 52, Fig. 5; Ex. 1003 ¶ 224). Petitioner contends that Couckuyt discloses associating data from a “spreadsheet document” with a chart, such as a “bar graph.” Id. at 35 (citing Ex. 1006, 6:1–37; Figs. 3a, 3c). below. Petitioner’s annotations to Figure 4 identify “Drop Zones” in red and “Data Fields” in Blue. Id. at 36. Petitioner contends Couckuyt discloses a “drag-and-drop user interface (DDUI) . . . associated with a data source, such as the two-dimensional data source 300,” and Figure 4 illustrates the DDUI permitting “value data fields and the characteristic data fields . . . to be dragged and dropped into drop zones.” Id. at 35–36 (citing Ex. 1006, 7:10–13). Petitioner contends that a “primary benefit of the charting DDUI is that the user can quickly change the data that is being presented in the chart,” and using Couckuyt’s techniques, a user can “quickly change the data” and see the desired effects. Id. at 36 (citing Ex. 1006, 1:18–19; Ex. 1003 ¶ 228). Petitioner contends that when Becerra’s control panel includes multiple charts, Couckuyt’s techniques would allow dragging-anddropping data from a data source to multiple charts, and would simplify the process of assigning data to multiple control panel components. Id. at 36–37 skill in the art would have also had a reasonable expectation of success combining Becerra with Couckuyt because the combination would amount to nothing more than incorporating Couckuyt’s well-known drag-and-drop techniques into Becerra’s system. Id. at 37 (citing Ex. 1003 ¶¶ 229–231). Patent Owner responds that Couckuyt focuses on selecting a data icon that corresponds to dragging and dropping data fields, not dragging and dropping data, while Becerra teaches that selecting various data ranges from the spreadsheet is desirable. PO Resp. 36–37 (citing Ex. 1004 7:48–52; Ex. 2001 ¶ 146). According to Patent Owner, a person of ordinary skill in the art would not have been motivated to merely select data fields that do not limit the selected data in any way. Id. Patent Owner further argues Becerra’s method of binding components to a spreadsheet range and extracting formulas from a spreadsheet teaches away from the multiple chart generation scheme of Couckuyt that uses drag and dropping of data fields. Id. at 37. According to Patent Owner, Couckuyt is directed to the need for a charting DDUI that can generate multiple charts at the same time and such a need does not exist in Becerra which in turn is focused on creating a control panel that is an interactive graphics simulation. Id. (citing Ex. 1004, 1:66–67, 2:5–8; Ex. 1005 ¶ 11; Ex. 2001 ¶ 148). Based on our review of the complete record, we determine that” slip op. at 31
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Whether QlikView Manuals Qualify as Prior Art Petitioner argues that “the QlikView Manuals describe a well-known system and are printed publications available to the public at least by July 8, 2008.” Pet. 7–9. Petitioner offers ample evidence to demonstrate the QlikView Manuals were publicly accessible by July 8, 2008. See id. (citing Ex. 1008; Ex. 1009; Ex. 1014–1023; Ex. 1003 ¶ 129–140; Ex. 1030;11 Ex. 1068 ¶¶ 4–7; Ex. 1032; Ex. 1033). Petitioner contends in 2008, QlikView was a well-known software product sold by QlikTech International AB (“QlikTech”). Id. at 8 (citing Ex. 1003 ¶ 129; Ex. 1030 ¶ 23; Ex. 1068 ¶¶ 4–7). Petitioner asserts that QlikTech announced that QlikView version 8.50 was scheduled for release on June 30, 2008, and QlikTech’s website added the “QlikView 8.50” hyperlink by July 8, 2008. Id. (citing Ex. 1003 ¶¶ 129–131; Ex. 1022, 1; Ex. 1068 ¶ 7). Petitioner contends that, as of July 8, 2008, a person of ordinary skill in the art would have understood that they could view the QlikView Manuals in the installation package. Id. (citing Exs. 1014–1017; Ex. 1003 ¶¶ 131–132; Ex. 1068 ¶ 7). Petitioner further contends that the QlikView Manuals were also available on QlikTech’s website as of this 11 As discussed below (see infra § IV.A), we grant Patent Owner’s Motion to Exclude as to certain portions of Exhibit 1030 and do not give them any weight. However, we deny Patent Owner’s Motion as to the remaining portions of Dr. Hall-Ellis’s testimony as well as Ms. Lofton’s testimony and various other exhibits proffered by Petitioner to show public accessibility of the QlikView manuals as of July 8, 2008. QlikView 8.50 was published on July 8, 2008. Id. at 8–9 (citing Exs. 1008, 1009, 1017, 1059, 1060; Ex. 1030 ¶¶ 29, 37). In its Patent Owner Response, Patent Owner does not contest that the QlikView Manuals were published and publicly available by July 8, 2008. PO Resp. 50 n.2 (noting only that Patent Owner intends to move to exclude evidence Petitioner relies on to establish the publication date for QlikView Manuals); Tr. 45:3–19. We are persuaded that Petitioner has shown by a preponderance of the evidence that the QlikView Manuals were publicly available as of July 8, 2008.12” slip op. at 50
Patent outcomesUS 8,271,892 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,271,892 - Snap Inc. v. You Map Inc.All claims unpatentablePTAB · May 4, 2026 · IPR2022-00568 · APJ Jason M Repko · IPR · Remand
Claims 1–20 remain unpatentable; the contingent motion to amend is denied because the proposed substitute claims would have been obvious over Feldman and Jackson in view of ordinary skill.
RulingsRemand decision- RemandDecided for patent owner
“challenge fails even if Petitioner’s summary of the references were correct because Petitioner did not present a sufficient reason to modify Feldman to include a current zoom level in its search request. FWD 56. The Federal Circuit vacated this finding specifically and contemplated that there would be a “consideration of obviousness” on remand. CAFC Dec. 10–11. That consideration requires more than determining whether any one reference teaches a current zoom level and a search, generally. See FWD 56 (quoting MTA Reply 10). Here, Petitioner’s challenge is based on modifying the Feldman-Jackson combination. So the Board must determine on remand whether the Feldman-Jackson combination in view of knowledge of a POSA meets the claim limitations at issue. We also disagree to the extent that Petitioner argues that the Board is precluded from considering additional arguments on the relevant issues on remand. The Board’s preliminary guidance on the Motion to Amend stated that Petitioner’s obviousness rationale was based on convenience and this reason was not sufficiently supported: reference lacks a sufficient explanation of why one of ordinary skill in the art would have added the zoom levels in the prior art to Feldman. See id. At most, Petitioner argues that it would be convenient to “specify the area the user desires to search for content” in this way. Id. at 14. But, on this record, Petitioner has not sufficiently explained why it would be convenient to do so in Feldman. See id. Nor has Petitioner sufficiently explained how or why the prior-art features confer this convenience. See id. MTA PG, 13. Because the Board’s conclusion turned on the lack of sufficient explanation, the briefing that followed was limited to Petitioner’s obviousness rationale. See, e.g., MTA Reply 9–12, MTA Sur-reply 1–12. Under these specific circumstances, we determine that it would be procedurally fair to fully consider the arguments on remand about whether the cited prior art teaches or suggests the limitations recited in the substitute claims. And, as discussed above, the Federal Circuit has directed the Board to consider obviousness. CAFC Dec. 10–11.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, and provides substantially the same expression of the level of ordinary skill in the art. Ex, 2003 ¶¶ 30–31; see FWD 6–7. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“In sum, Petitioner has shown that replacing Feldman’s radius with Badger’s zoom level meets all the limitations of the claim considered in the context of the Feldman-Jackson combination. Also, the evidence shows a motivation to modify the radius in Feldman’s search request to instead be based on the zoom-level parameter disclosed in Badger. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way,’ . . . using the ‘prior art elements according to their established functions.’”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). substitute claim 21 is unpatentable over Feldman, Jackson, and knowledge of one of ordinary skill in the art. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (“[U]nder 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior art, but whether ‘the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.’”).” slip op. at 19
- Strike new argumentNew argument consideredDecided for patent owner
“precluded from considering additional arguments on the relevant issues on remand. The Board’s preliminary guidance on the Motion to Amend stated that Petitioner’s obviousness rationale was based on convenience and this reason was not sufficiently supported: reference lacks a sufficient explanation of why one of ordinary skill in the art would have added the zoom levels in the prior art to Feldman. See id. At most, Petitioner argues that it would be convenient to “specify the area the user desires to search for content” in this way. Id. at 14. But, on this record, Petitioner has not sufficiently explained why it would be convenient to do so in Feldman. See id. Nor has Petitioner sufficiently explained how or why the prior-art features confer this convenience. See id. MTA PG, 13. Because the Board’s conclusion turned on the lack of sufficient explanation, the briefing that followed was limited to Petitioner’s obviousness rationale. See, e.g., MTA Reply 9–12, MTA Sur-reply 1–12. Under these specific circumstances, we determine that it would be procedurally fair to fully consider the arguments on remand about whether the cited prior art teaches or suggests the limitations recited in the substitute claims. And, as discussed above, the Federal Circuit has directed the Board to consider obviousness. CAFC Dec. 10–11.” slip op. at 11
Patent outcomesUS 10,616,727 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 10,616,727 - Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15
Patent outcomesUS 8,558,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,558,223 - PTAB · Oct 29, 2025 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds and granted ADC Solutions Auto LLC’s unopposed motion to join IPR2024-01219 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Deltran Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art. Under these circumstances, our reasons for instituting review based on Deltran’s petition apply with equal force to the “substantively identical” Petition filed by ADC Solutions. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in the Deltran IPR, we institute review on all claims and all grounds asserted in the Petition. See generally IPR01219, Paper 8 (Institution Decision in the Deltran IPR).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(1) the Motion for Joinder is timely, having been filed “no later than one month of the institution decision” in the Deltran IPR (Motion 6); (2) the Petition here “is substantially identical to the petition in the Deltran IPR” (id.; see also id. at 7 (“there are no substantive changes to the facts, citations, evidence, or arguments relied upon”); (3) “joinder should have no meaningful impact on the Deltran IPR trial schedule because the present Petition presents no new issues or grounds of unpatentability” (id. at 8); (4) “Petitioner explicitly agrees to take an ‘understudy’ role, which will simplify briefing and discovery” in the joined proceeding, “so long as the current lead petitioner in IPR2024-01219 remains an active party (id. at 9; see also id. at 4, 6);2 and (5) joinder will simplify “briefing and discovery” as all issues will be resolved “in a single proceeding” (id. at 9). Patent Owner does not contest any facts alleged by ADC Solutions in its Motion for Joinder. Having considered Petitioner’s Motion for Joinder, we determine that joinder of the instant proceeding with in the Deltran IPR is appropriate. For the reasons in our Decision Instituting Review in Deltran IPR, we find that the Petition in this proceeding also warrants institution of inter partes review and that joinder is appropriate. Accordingly, we grant Petitioner’s 2 We understand the “understudy role” as including Petitioner not making any oral argument or presentation during telephone conferences with the Board.” slip op. at 4
NonePatents in suitUS 11,667,203 - Highlevel, Inc. v. Etison LLC D/B/A ClickfunnelsInstitution deniedPTAB · Jun 2, 2025 · IPR2025-00235 · APJ Jason M Repko · IPR · Institution
The Board denied institution of the IPR challenging claims 1–20 because the district court had already found the claims invalid under § 101.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases.” Patent Trial and Appeal Board, Standard Operating Procedure 2 (Revision 11).1 We see no reason to deviate from the informative decision here. The relevant facts in this case are indistinguishable from those at issue in Hulu. In that case, “Petitioner filed a motion to dismiss under Rule 12(b)(6), asserting that the claims challenged in [that] proceeding are invalid as reciting ineligible subject matter under § 101,” and “[t]he district court agreed with Petitioner and issued a decision” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Because the District Court already found the claims invalid under 35 U.S.C. § 101 in the parallel litigation, we deny institution of inter partes review. See id. III. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 6
Discretionary denialPatents in suitUS 11,361,047 - Highlevel, Inc v. Etison LLC D/B/A ClickfunnelsInstitution deniedPTAB · Jun 2, 2025 · IPR2025-00234 · APJ Jason M Repko · IPR · Institution
The Board denied institution of the IPR challenging claims 1–20 because the district court had already found the claims invalid under § 101, making another review unnecessary.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases.” Patent Trial and Appeal Board, Standard Operating Procedure 2 (Revision 11).1 We see no reason to deviate from the informative decision here. The relevant facts in this case are indistinguishable from those at issue in Hulu. In that case, “Petitioner filed a motion to dismiss under Rule 12(b)(6), asserting that the claims challenged in [that] proceeding are invalid as reciting ineligible subject matter under § 101,” and “[t]he district court agreed with Petitioner and issued a decision granting Petitioner’s motion to dismiss and dismissing with prejudice Patent Owner’s infringement claim.” Hulu, IPR2024-01252, Paper 27 at 2. According to Hulu, “Because the patent claims already stand invalid, it is unnecessary to institute another proceeding to review them for patentability under other grounds.” Id. That is the case before us (Ex. 2007), and we reach the same conclusion: “the efficiency and integrity of the patent system is best served by denying institution.” Hulu, IPR2024-01252, Paper 27 at 3. slip op. at 6
Discretionary denialPatents in suitUS 10,846,357 - PTAB · Mar 6, 2025 · IPR2024-01223 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We consider the following factors to assess “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.” 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”).” slip op. at 5
- Parallel petitionsNot reached
“B. Denial Based on Multiple Petitions Patent Owner asserts we should deny the petition in IPR2024-01222 because it is one of two petitions challenging the same claims of the ’389 patent. See Paper 7, 3. Patent Owner does not, however, argue we should deny the Petition in this case. See id. (arguing that “to the extent a trial is warranted, the Board should institute . . . [only] the IPR2024-01223 petition.”). Because Patent Owner contends only that we should deny the petition in IPR2024-01222, we do not address that issue here.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“C. Claim Construction 1. “depositing by shadow mask, sputtering, ink jet deposition, screen printing evaporation” Claim 40 recites “wherein the step for selectively depositing at least one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 15 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 6–7. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. 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§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Feb 12, 2025 · IPR2024-01140 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–51 and all petition grounds, finding a reasonable likelihood that claims 1–20, 22–42, and 44–51 are obvious over TML6 and Fandrianto, and claims 21 and 43 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Absent specific evidence, the Board typically “will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even assuming that evaluating the summary of TML6 in the challenged patent’s background were the same as evaluating the TML6 code, Petitioner has shown under Becton, Dickinson factors (e) and (f) that the Office erred by overlooking the TML6-Fandrianto combination for the reasons discussed below in the analysis of Petitioner’s challenges. See infra Section II.E. That is, we disagree with Patent Owner that Petitioner has failed to meet its burden. Prelim. Resp. 36–37. Thus, none of Becton, Dickinson factors (c), (e), and (f) weigh in favor of denying the Petition under § 325(d). 4. Conclusion We do not exercise our discretion to deny the Petition under § 325(d).” slip op. at 16
- Skill levelOther
“Patent Owner argues that a person of ordinary skill in the art “would be an electrical and/or computer engineer with one to two years of experience relating to video coding hardware and/or software.” Prelim. Resp. 26. We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 27. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,280,599 - PTAB · Feb 12, 2025 · IPR2024-01141 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of all challenged claims on all petitioned grounds, finding a reasonable likelihood that Amazon would prove at least one claim obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 4–17, 19–26, 28, 29, 31–33, 36–49, 51–59, 61, 62, and 64–83 in the ’273 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“For the reasons discussed above, factors (1) through (5) do not favor discretionary denial. See supra Sections III.C.1–III.C.5. Thus, we do not reach “the compelling merits analysis.” See CommScope, IPR2022-01242, Paper 23 at 4–5. Further, the circumstances Patent Owner identifies do not warrant exercising discretion under § 314(a) to deny institution. See Prelim. Resp. 68–69.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same art previously presented to the Office,” we turn to the second part of the Advanced Bionics framework and consider Becton factors (c), (e), and (f) in determining “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” See Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10. For the reasons explained below, Petitioner has demonstrated a material error by the Office. Becton factor (c) concerns the extent to which the asserted references were evaluated during prosecution, including whether a rejection rested on any reference. Becton, IPR2017-01586, Paper 8 at 17. For instance, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Advanced Bionics, IPR2019-01469, Paper 6 at 10. Under Becton factor (c), evaluating the ’273 patent’s description of TML6 differs significantly from evaluating the source code itself. As Petitioner asserts, the TML6 source-code files comprising Exhibit 1005 include “far greater coverage of the components and functionalities of the TML6 codec” and were “not considered by the Examiner.” See Ex. 1001, 8:38–47, 11:25–13:27, 28:36–41, 44:9–11, 46:31–41, 47:27–48:6, 49:24–50:63, Figs. 13a–13c; Ex. 1005; Pet. 126. As explained in the patentability analysis below, Petitioner relies on details in the source code about how the oneforthpix() function works and interacts with the imgY, img4Y_tmp, and mref data structures to establish unpatentability. See infra Sections V.D.4(a)–(d). The ’273 patent does not discuss those software instrumentalities. See, e.g., Ex. 1001, 8:38–47, 11:25–13:27, 44:9–11, 46:31–41, 47:27–48:6, 49:24–50:63. Based on the current record, we see no evidence that the Examiner evaluated the source code itself, which forms the foundation for Petitioner’s challenges.” slip op. at 26
- Skill levelOther
“The parties seem to agree generally about the level of ordinary skill in the art. At this stage of the proceeding, neither party contends that any differences between their respective descriptions of an ordinarily skilled artisan would impact the patentability analysis. During the instituted trial, we encourage the parties to address whether there are any differences between their respective descriptions that would impact the patentability analysis. If so, they should explain how those differences impact the patentability analysis. Based on the current record, our analysis would not change if we adopted Petitioner’s description of an ordinarily skilled artisan or Patent Owner’s description.” slip op. at 30
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,036,273
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.