- PTAB · Jul 14, 2025 · IPR2025-00153 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–30 on all petitioned grounds, finding a reasonable likelihood that claims 1, 8, 15, and 22 are obvious over Ferro, Oyobe, Donnelly, Letendre, and Seelig.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated and found it obvious to modify Ferro-Oyobe-Donnelly to include Letendre’s graphical slider on the charge level bar graph of the GUI as a third portion, where the operator moves the slider to specify a desired charge.” Pet. 60 (citing Ex. 1003 ¶ 235). Petitioner contends that Ferro- Donnelly already reflects a system with a GUI on a touchscreen for depicting state of charge and modifying that GUI to add a slider for specifying the state of charge is expressly motivated by Letendre’s indication that “it is essential that the driver be able to limit any draw down so travel is not affected.” Id. (citing Ex. 1007, 19). Letendre also describes its GUI with the slider as “a control that the driver sets according to driving needs.” Id. at 59 (citing Ex. 1007, 19). Ferro’s express description of an input/output device for managing charging preferences and Letendre’s express description of a GUI for setting charging parameters suggest using Letendre’s GUI with Ferro’s system. Id. at 60–61 (citing Ex. 1003 ¶ 236). Petitioner also argues that its proposed combination constitutes “applying a known technique ([Letendre’s] slider . . .) to a known device ([Donnelly’s] vehicle GUI showing a charge bar graphic) ready for improvement to yield predictable results of easily allowing a user to choose a desired level of charge.” Id. at 61 (citing Ex. 1003 ¶ 237). Petitioner also contends that “[s]liders on GUIs were known to make inputting information easier, and thus [an ordinarily skilled artisan] would have been motivated to include a slider on the bar graph.” Id. (citing Ex. 1003 ¶ 237). An ordinarily skilled artisan would have reasonably expected to successfully combine Letendre’s slider in the GUI suggested by Ferro-Donnelly because that GUI already enabled setting charging preferences including “amount of charge” (i.e., minimum and maximum). Id. at 61–62 (citing Ex. 1004 ¶ 123; Ex. 1003 ¶¶ 238–239).” slip op. at 25
- Strike new argumentNew argument consideredDecided for petitioner
“impermissibly incorporating arguments from Mr. Andrews’s Declaration into the Petition to avoid the word count limit. Prelim. Resp. 56–59. Patent Owner contends that the Andrews declaration is “over twice as long as the Petition at 214 pages” with a substantive portion containing “an incredible 29,831 words.” Id. at 57. Patent Owner contends that “the only way to potentially understand the Petitioner’s proposed unpatentability challenges is to wade through the 29,831 words of the Andrews Declaration.” Id. Patent Owner also complains that Andrews supports his testimony relating to Petitioner’s first challenge by citing “thirty-seven (37) additional references in addition to Ferro, Oyobe, Donnelly, Letendre, and Seelig.” Id. We discern no violation of Rule 42.6(a)(3). To the contrary, that Mr. Andrews’s supports his extensive explanations of his opinions with citations to dozens of pieces of objective evidence, is a feature, not a bug of his testimony. Mr. Andrews, and Petitioner by extension, leave virtually none of the substance of his testimony unsupported by objective evidence, a practice that we applaud.” slip op. at 28
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,631,987 - PTAB · Jul 14, 2025 · IPR2025-00152 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds after finding a reasonable likelihood that claims 1, 6, and 11 are obvious over Sutardja, Donnelly, and Letendre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that an ordinarily skilled artisan would have been motivated to incorporate Donnelly’s GUI into Sutardja’s display to more easily and conveniently communicate Sutardja’s state of charge information to a user in a graphical format. Id. at 35 (citing Ex. 1011 ¶ 242; Ex. 1003 ¶¶ 157–159. Petitioner also argues that an ordinarily skilled artisan would have found it obvious to combine Donnelly’s GUI depicting a bar graph indicating the charged and uncharged capacity of a vehicle battery into Sutardja according to well-known methods that would have yielded predictable results. Pet. 36 (citing Ex. 1003 ¶ 160). Petitioner also contends that an ordinarily skilled artisan would have reasonably expected to successfully combine Donnelly’s GUI as it relates to the state of charge into Sutardja’s vehicle, which already processed information about the state of charge of its battery and included a display showing charging parameters. Id. (citing Ex. 1011 ¶¶ 242, 243, Ex. 1003 ¶ 161).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“includes “at least” a bar graph as shown in Figure 7. Id. at 4. Patent Owner argues that Petitioner’s “proposed construction should be rejected” because it “would wrongly import embodiments from the specification.” Prelim. Resp. 20–21. Patent Owner also contends that an ordinarily skilled artisan would recognize that the “unitary charge indicator is not limited to a bar graph representation.” Id. at 21. We discern no dispute over the meaning of “unitary vehicle charge indicator” because Petitioner does not argue that the term is “limited” to the embodiment shown in Figure 7, only that the term “at least includes” that embodiment. Patent Owner does not contend otherwise.” slip op. at 8
- Strike new argumentDecided for petitioner
“Patent Owner argues that Petitioner violates Rule 42.6(a)(3) by impermissibly incorporating arguments from Mr. Andrews’s Declaration into the Petition to avoid the word count limit. Prelim. Resp. 46–49. Patent Owner contends that the Andrews declaration is “over 140 pages” with a substantive portion containing “multiples of the allotted 14000 words” to a petition. Id. at 47. Patent Owner contends that “the only way to potentially understand the Petitioner’s proposed unpatentability challenges is to wade through the extraneous pages cited within the Andrews Declaration.” Id. Patent Owner also complains that Andrews supports his testimony relating to Petitioner’s first challenge by citing “many additional references in addition to references actually ‘relied upon’ by Petitioner.” Id. at 47–48. We discern no violation of Rule 42.6(a)(3). To the contrary, that Mr. Andrews’s supports his extensive explanations of his opinions with citations to dozens of pieces of objective evidence, is a feature, not a bug of his testimony. Mr. Andrews, and Petitioner by extension, leave virtually none of the substance of his testimony unsupported by objective evidence, a practice that we applaud.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,990,788 - Klipsta Pty Ltd v. Lindsay AlbaneseInstitutedPTAB · Jul 10, 2025 · IPR2025-00346 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by KR ’458.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). 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). Upon consideration of the Petition and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review as to the challenged claims of the ’047 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would be a regular consumer/shopper with a rudimentary knowledge of the use of magnetic clips and a basic understanding of clip construction.” Pet. 13. We find, for purposes of this Decision, that the ’047 Patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’047 Patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’047 Patent discloses that in addition to being separate straps, the rear strap and the front strap “can be formed from a single piece of material.” Ex. 1001, 3:40–44, 5:24–32, 10: 18–25. In particular, Figures 5A–5B of the ’047 Patent illustrate rear strap 510 and front strap 520 as being “formed from a single piece of material that is folded approximately in half where a first half can be the rear strap 510 and a second half can be the front strap 520.” Id. at 10:18–21, Figs. 5A–5B. Indeed, Patent Owner acknowledges “[i]t should be noted that forming the first and second straps from a single piece of material is well within the scope of the claimed invention.” Ex. 1007, 5 (citing the ’047 Patent at 3:37–44). Moreover, we note the positions taken by the parties are consistent with the fact that claim 13, which depends from claim 1, recites “wherein the first strap and the second strap are formed from a single folded strap.” Ex. 1001, 14:47–48. We, therefore, adopt Petitioner’s construction of “the second strap joined to the first strap” to include “a single piece of material.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The ’047 Patent discloses that the hook is used to attach the hat holder to another object. Ex. 1001, 8:31–33. In reference to Figures 3A–3C, the ’047 Patent discloses that “the hook 340 is formed from a strap of flexible material. The flexible material can be, for example, nylon, leather or leatherette. The hook 340 can be formed from the same material as the front or rear straps 310 and 320, respectively.” Id. at 8:26–31, Figs. 3A–3C; see also id. at 6:58–7:3. This disclosure is indicative that the term “hook” can be a strap in contrast to a structure that is typically regarded as being a hook, as shown in Figures 1A–1C, 2A–2C, 4A–4B, 6A–6B, 7, 8 of the ’047 Patent. Additionally, we note that consistent with the above disclosure, claim 10, which depends from claim 1, recites “wherein the hook is [a] flexible strap having a closure.” Ex. 1001, 14:41–42. We, therefore, adopt Petitioner’s construction of a “hook” to include “structure that serves to attach the hat holder to another object.”” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,413,047 - PTAB · May 19, 2025 · IPR2025-00032 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 10, 19, and 28 are obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“At least because of the material differences in Ferro compared to Hafner ’174 and the reliance on Donnelly and Letendre, which were not before the Office, we find that the same or substantially the same art was not previously presented to the Office.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree with Patent Owner. It is true that Oyobe focuses on alerting a vehicle user to a low state of charge by raising a physical indicator on the exterior of the vehicle (i.e., the “informing apparatus 102) when the battery is low. Ex. 1005 ¶ 40. Oyobe explains: even in such a case where the vehicle user exit from the vehicle without checking the SOC of main battery B on the console panel, informing apparatus 102 disposed at a location where it can easily be seen outside the vehicle by the vehicle user allows the vehicle user to easily recognize the necessity of charging main battery B. Id. However, Oyobe’s focus on raising a physical indicator on the vehicle as a reminder does not detract from Oyobe’s unambiguous disclosure that its vehicle also includes position detecting apparatus 108 that uses wireless communication to “sense that the vehicle is parked at the location where charging equipment is installed.” Id. ¶ 142. Oyobe’s ability to sense whether a vehicle is parked next to a charger allows Oyobe’s system to remind the user to charge the battery by raising low battery indicator 102 while the vehicle is located next to a charger but not “where charging cannot be performed.” Id. ¶¶ 143–145. Accordingly, regardless of the reason that Oyobe provides for including its vehicle position detecting apparatus, Oyobe undeniably describes a vehicle sensor that can provide “information indicative of a presence of an electric vehicle in a parking space” near a charging station. And, we find that Petitioner has sufficiently explained why an ordinarily skilled artisan would have been motivated to use Oyobe’s sensor in Ferro’s electric vehicle to “advantageously allows a user to instruct charging without exiting the vehicle and physically interacting with a charging station.” Pet. 11–12 (citing Ex. 1003 ¶¶ 150–152).” slip op. at 20
- Strike new argumentNew argument consideredDecided for petitioner
“Third, Patent Owner argues that Petitioner violates Rule 42.6(a)(3) by improperly incorporating arguments from Mr. Andrews’s Declaration into the Petition to establish that Oyobe teaches sensing the presence of a vehicle in a “parking space” as recited in limitation 1e. Prelim. Resp. 42–43 (citing Pet. 19–20 (citing Ex. 1003 ¶¶ 178–181)). Patent Owner contends that Mr. Andrews’s citation of four references that are not expressly cited in the Petition, Exhibits 1018, 1053, 1057, and 1059, implicitly demonstrates that the Petition incorporates arguments by reference. Id. Not only do we find Petitioner’s reliance on Mr. Andrews’s testimony to be persuasive, but we also find that Mr. Andrews’s citations to Exhibits 1018, 1053, 1057, and 1059 provide strong support for his testimony that an ordinarily skilled artisan would understand that Oyobe teaches that its vehicle is in a parking space when Oyobe’s apparatus 108 detects that “the vehicle is parked” near charging equipment. Far from improperly incorporating arguments by reference, we find Mr. Andrews’s citation to objective evidence to support his opinions on how an ordinarily skilled artisan would read Oyobe’s disclosure to be preferred and highly persuasive.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,563,338 - Google LLC v. Ecofactor, Inc.InstitutedPTAB · May 13, 2025 · IPR2025-00097 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that claim 1 is unpatentable over Hildebrand alone or with Shah.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner further identifies that Shah similarly teaches calculating operational efficiency values for an HVAC system and using these values “to monitor the integrity of the thermal system.” Id. at 17–18 (quoting Ex. 1006, 4:63–5:10). Petitioner matches these and other teachings in combination with Hildebrand to each of the limitations of claim 1. Id. at 17– 10:32–36, 11:59–61, 12:2–20, Fig. 1; Ex. 1002 ¶¶ 61–140). Petitioner also provides an extensive discussion of the reasons to combine Shah with the system of Hildebrand, such as to avoid being limited, like Hildebrand, to comparisons of system efficiencies between time periods with the same outside temperature. Id. at 19; see also id. at 18–24. We have reviewed the Petition and supporting evidence and determine that the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing that claim 1 is unpatentable over Hildebrand alone or in combination with Shah.3” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe the claims in accordance with the ordinary and customary meaning as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). No terms need to be expressly construed at this time.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 11,835,394 - PTAB · Apr 25, 2025 · IPR2024-01463 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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). We decline to speculate on how the court may rule on the pending motion to stay. Accordingly, this factor is neutral.” slip op. at 13
- 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–10 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“TC(220), and ΔRz/Ra are result effective variables and that copper foils having ΔPD, TC(220), and ΔRz/Ra values that meet the values recited in claim 1 have advantageous properties. See, e.g., Ex. 1005 ¶ 45 (Kim ’761, disclosing that preferably the “difference in peak count roughness Rpc between the shiny surface . . . and the matte surface . . . of the electrolytic copper foil . . . is preferably 60 or less” because “when the difference in the peak count roughness Rpc exceeds 60 capacity maintenance of the secondary battery is deteriorated.”);15 Ex. 1007, 3:16–23, 4:14–23 (Cheng, disclosing that the foils of Cheng’s invention have (220) and (311) surfaces that provide increased elongation and that solve a high roughness problem that rendered traditional products unsuitable for use in a lithium ion secondary battery), 10:27–34 (Cheng, disclosing that in the foils of Cheng’s invention “the roughness difference between both sides was extremely small” and thus “it was . . . not easy for the electrolytic copper foil to break or fracture during the charging-discharging cycles and the life of a battery is thus increased”), Tables 3 & 4 (Cheng, disclosing embodiments and comparative examples with TC(220) values meeting the requirements of claim 1); Ex. 1008, 6:36–44 (Wolski, disclosing that “the surface roughness Rz at the matte side of the untreated copper foil of the present invention is the same or smaller than the surface roughness Rz at the shiny side . . . so that the surface treated copper foil . . . becomes more low-profiled . . . whereby it becomes a foil having a large etching factor”), 9:1–29 & Table 2 (Wolski, disclosing 15 Dr. Randall testifies that “Kim ’761’s peak count roughness Rpc corresponds to the peak density PD of the ’706 patent.” Ex. 1003 ¶ 52. At this stage in the proceeding, this testimony is unrebutted. 38 embodiments meeting the ΔRz/Ra of claim 1, describing them as having “matte side roughnesses” that are “sufficiently small,” and as having “excellent” “high temperature elongation characteristics”), 11:37–41 (Wolski, describing comparative examples as having “large” matte side roughnesses “whereby etching factors are not good”), 12:12–27 (Wolski, teaching that “as compared with a conventional untreated copper foil, both surfaces of the untreated copper foil obtained by [Wolski’s] invention are flat” resulting in a low profile foil that has “excellent elongations at room temperature and high temperature and also high tensile strength”). The teachings in the prior art support the presently unrebutted testimony of Dr. Randall explaining why the POSA would have been motivated to modify Kim ’761’s copper foil to have the claimed TC(220) and ΔRz/Ra. Ex. 1003 ¶¶ 66–68, 71–74; Pfizer Inc., v. Sanofi Pasteur Inc., 94 F.4th 1341, 1348 (Fed. Cir. 2024) (“Where [a gap in prior art] includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is ‘normally obvious.’”). Accordingly, we are not persuaded by Patent Owner’s argument that Petitioner failed to articulate a sufficient motivation to combine the references. To the contrary, the preliminary record presents a strong showing that the POSA would have been motivated to combine the references in the manner described in the Petition.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill in the art. Prelim. Resp. 4 (“For purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art”). Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’706 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,706 - PTAB · Mar 12, 2025 · IPR2024-01239 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of all challenged claims, finding a reasonable likelihood that claim 1 is unpatentable over Lefebvre and Chua.
RulingsInstitution decision- Other 314aDenied
“The primary basis for Patent Owner’s argument is the fact that the ’111 patent has been subject to previous inter partes reviews filed by other parties.2 Id. at 14–19. A related fact—not fully addressed by Patent Owner—is that Patent Owner has staggered-in-time its suits alleging infringement of the ’111 patent against different parties. Patent Owner sued Cisco Systems in July 2022, but waited a year to separately file suit against Juniper Networks and Petitioner. IPR2023-00554, Ex. 1010; IPR2024- 00037, Paper 2. Patent Owner was not obligated to sue Petitioner at the same time that it sued Cisco Systems. Similarly, Petitioner was under no obligation to request to join Cisco System’s earlier filed inter partes review. See Prelim. Resp. 16. Rather, as acknowledged by Patent Owner, Petitioner waited to file the present inter partes review until the last day allowed under statute. Id. at 15, 17. Based on the circumstances before us, we do not agree with Patent Owner that it would be appropriate to enforce a deadline on Petitioner that is earlier than the deadline outlined by statute. See id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also provides an extensive discussion of the reasons to combine Chua with the system of Lefebvre, such as due “to Chua’s more detailed teachings regarding actions an SDN controller takes in response to information from security-related services like DPI.” Id. at 25 (citing Ex. 1002 ¶ 102); see also, e.g., id. at 24–26 (discussing reasons to combine). Petitioner also provides a detailed discussion of how the combined teachings of Lefebvre and Chua teach the method steps of claim 1. Id. at 32–39; see also Ex. 1002 ¶¶ 115–136. We have reviewed the Petition and supporting evidence and determine that the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing that claim 1 unpatentable over the combination of Lefebvre and Chua.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,652,111 - PTAB · Feb 13, 2025 · IPR2024-01115 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. We do not agree, however, that seven petitions are justified.8” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01116 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success for the Ahn and Chaudhri obviousness challenge.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition second on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),5 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of two petitions in this situation, and because this Petition is ranked second, we do not reproduce that analysis here.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has sufficiently shown how Ahn teaches or suggests limitation 2.d of claim 2, and that the proposed combination of Ahn and Chaudhri teaches or suggests this limitation.” slip op. at 21
- Skill levelOther
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“blur[ring] . . . at least a portion of” an object, as recited in independent claims 2 and 225, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01119 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1, 2, and 208–216 on all grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Ahn, Chaudhri, and Shiplacoff.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition first on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),6 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of at least one petition in this situation, and because this Petition is ranked first, we do not reproduce that analysis here.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 4) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent claims 1 and 2, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 26–27 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754
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.