- Luxottica Of America, Inc. v. E-Vision Smart Optics, Inc.Adverse judgmentPTAB · Jun 29, 2026 · IPR2025-01512 · APJ Arthur M Peslak · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, cancelled claims 1–27, and terminated the proceeding.
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). Under these circumstances, entry of judgment adverse to the Patent Owner is appropriate as to claims 1–27 of the ’612 patent. Consequently, we grant Patent Owner's request for adverse judgment.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
NonePatents in suitUS 11,971,612 - Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentablePTAB · Feb 19, 2026 · IPR2024-01258 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1, 2, 4–7, and 9–14 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Inoue–Smith obviousness rationale was insufficient.
RulingsFinal written decision- BurdenFwd mixedMixed
“found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“We do not agree with Petitioner that the fact pattern before us is analogous to Rembrandt. The rationale to combine the teachings of Inoue and Smith provided in the Petition focuses on replacing incandescent bulbs with LEDs, and includes the generic statement that “[t]he numerous record-supported advantages, set forth in Smith provide a clear motivation for use of the teachings of Smith as applied to Inoue, so as to enjoy the advantages set forth in Smith.” Pet. 47. The testimony in Dr. Schubert’s Declaration at pages 99–100 cited in support of Petitioner’s Reply arguments was not cited or otherwise referenced in the Petition. See Pet. 46–55. We find that the Petitioner’s Reply is not responsive to the Institution Decision and is improper because it presents a new rationale to combine the teachings of Inoue and Smith that was not expressed in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Petitioner could have presented its rationale to make out a prima facie case of unpatentability in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Accordingly, we do not consider Petitioner’s new rationale to combine the teachings of Inoue and Smith presented for the first time in the Reply. Based on the entire record, but not including Petitioner’s new rationale and newly cited support to Smith and Dr. Schubert’s testimony (Exs. 1013, 1017) presented for the first time in the Reply, we are not persuaded that Petitioner sets forth in the Petition sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify the circuit of Inoue to include a light source or LED light source with a twinkling or flashing effect in view of Smith’s teachings. See Pet. 46–47, 49–50, 51–53, 55. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of independent claim 9 and dependent claims 3, 5, and 6 would have been obvious over the teachings of Inoue and Smith.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“Based on Petitioner’s citations to Holler, Inoue, and Dr. Schubert’s testimony (Ex. 1013), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to “use the resistive value as taught by Holler in the circuit of Inoue to control the illumination of the light sources so that the other illumination devices in the serial light string will not go dark or change illumination if one of the LEDs fails or becomes disconnected.” Pet. 27; see KSR, 550 U.S. at 418. Based on the entire record and including the reasons explained above in Section II.D.2. addressing anticipation of claim 1 by Inoue, we determine Petitioner shows by a preponderance of the evidence that the subject matter of claims 1 and 10 would have been obvious over Inoue and Holler. See Pet. 26–32.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“We observe that, aside from Declaration testimony of Mr. Altamura and accompanying exhibits, Patent Owner does not offer any additional evidence to establish reduction to practice. An inventor’s testimonial assertion of inventive facts requires corroboration by independent evidence. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). The purpose of the corroboration requirement is to prevent fraud, by providing independent confirmation of the inventor’s testimony. Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997). Without the requirement of independent corroboration, there would be a great temptation to commit perjury and the adverse party would be effectively precluded from a successful rebuttal. Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). A rule of reason applies to determining whether the inventor’s testimony has been corroborated. See id. at 1195. “The rule of reason, however, does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). Accordingly, based on the entire record, we find that Mr. Altamura’s Declaration testimony is uncorroborated. Yu is prior art to the ’252 Patent because Patent Owner is unable to establish actual reduction to practice earlier than the July 31, 2006, filing date of Yu.” slip op. at 51
Patent outcomesUS 11,096,252 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,096,252 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Some claims unpatentablePTAB · Feb 2, 2026 · IPR2024-00940 · APJ John A Hudalla · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over Leaning and over Leaning with Klemets; claims 12–20 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner does not address the level of ordinary skill in the art in its post-institution papers. We adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that no construction of “virtual timeline” is necessary. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Rather, as discussed below, the parties’ dispute appears to be about whether the “virtual timeline” identified by Petitioner is used to arrange the requested streamlets, as is also recited in claim 9. We address that argument below. See infra § II.D.10.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“On this record, we determine that the recitation “to achieve continuous presentation” is limiting and requires an amount of continuous (uninterrupted) playback/presentation after an upshift or downshift. The specification describes agent controller 702 determining whether to upshift based on a trigger threshold Θup, which itself is based on various factors including a current read ahead margin and a minimum safety margin. See Ex. 1001, 17:44–58. If agent controller 702 can sustain upshift quality, then it will upshift and request higher quality streams. See id. at 17:58–61. Conversely, when an upshift is not possible, agent controller 702 determines whether to downshift based a different threshold Θdown, which itself is based on the same sort of factors. See id. at 18:4–7. When the stream quality is not adequate, it downshifts. See id. at 18:7–14. These disclosures are similar to the language of claim 12, which recites “repeatedly generating a factor indicative of a current ability to receive the digital content at a rate sufficient for presenting the digital content as the digital content is received, . . . wherein the factor relates to a performance of the network” and “making the successive determinations whether to change the requested bit rate based on the factor to achieve continuous presentation of the digital content using the individually-requestable portions of the highest bit rate one of the copies determined receivable at that time.” Ex. 1001, 20:5–16 (emphasis added). That is, claim 12 refers to “achiev[ing] continuous presentation” based on what is “sufficient for presenting the digital content,” trading quality to ensure continuous playback.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“server comprises at least two servers and wherein at least one streamlet is requested from a first of the at least one server and at least one other streamlet is requested from a second server of the at least one server other than the first server.” Ex. 1001, 19:7–12. Petitioner references its mapping of the “at least one server” in claim 1 to Leaning’s server 1. Pet. 20 (citing Ex. 1004, 2:15–16, 2:18–22, 2:31–32, 5:8–14, Fig. 1), 23 (citing Ex. 1004, 6:13–26, 9:3–7, 16:6–12), 37; see supra §§ II.D.2.b–c. Petitioner contends that, “[t]o the extent Leaning does not disclose at least two servers wherein one sub-file (streamlet) is requested from a first server and another sub-file (streamlet) is requested from a second server such an arrangement would have been obvious in view of the knowledge of a [an ordinarily skilled artisan].” Id. at 37. Citing the common nature of such an arrangement, Petitioner contends that an ordinarily skilled artisan would have been motivated to provide multiple web servers containing the same sets of sub-files for streams in order to have redundancy in the system and allow for clients to establish connections with multiple servers and request a first sub-file from a first web server and, if the connection between the first web server becomes congested or the first web server otherwise fails or becomes unavailable, request a subsequent sub-file from the second web server. Id. at 37–38 (citing Ex. 1003 ¶ 85; Ex. 1012, 108,5 Fig. 4-11). Patent Owner does not dispute Petitioner’s analysis for claim 3. We are persuaded that it would have been obvious to implement Leaning’s server 1 as two servers that store different streamlets based on Dr. Houh’s uncontested testimony about system redundancy. See Ex. 1003 ¶ 85. His testimony is backed by a contemporaneous reference about HTTP that shows requests for different objects from different servers over parallel TCP connections. See, e.g., Ex. 1012, 108–09, Fig. 4-11. Thus, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 3 would have been obvious over Leaning.” slip op. at 34
Patent outcomesUS 11,991,234 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,991,234 - PTAB · Apr 29, 2025 · IPR2025-00180 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Comcast would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. Petitioner has complied with our guidance by filing a statement ranking the petitions. See Practice Guide, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2025-00181 and IPR2025- meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts. warranted. Given our Decisions to Deny Institution in IPR2025-00181 and IPR2025-00182 and the official guidance we have received in the Practice Guide, we have no option but to deny Patent Owner’s request that we exercise our discretion to deny institution on all three of the petitions challenging the ’275 patent. Accordingly, we do not exercise our discretion to the deny institution in the instant proceeding. E. Anticipation of Claim 1 by Zhang” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’275 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.7 7 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner 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. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that all of the limitations “should be given their ordinary and customary meaning to a” person having ordinary skill in the art. Pet. 19. Although Petitioner argues that none of the limitations are means-plus-function terms, Petitioner provides constructions to the extent that there are means-plus-function terms. Pet. 19–20. Patent Owner does not respond. See Prelim. Resp. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 8 If either party intends to argue a claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“Practice Guide”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Parallel Petitions” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,785,275 - Askeladden, L.L.C. v. Jabaa, L.L.C.Adverse judgmentPTAB · Mar 21, 2025 · IPR2024-00916 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner based on abandonment of the contest and cancelled claims 1–24 of the ’637 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner’s failure to file mandatory notices, a preliminary response, a response to the Petition, and a response to the Order to Show Cause and failure to take any other substantive action are consistent with abandonment of the contest. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the challenged claims are appropriate.” slip op. at 3
NonePatents in suitUS 7,480,637 - Askeladden, L.L.C. v. Jabaa, L.L.C.Adverse judgmentPTAB · Mar 21, 2025 · IPR2024-00915 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Jabaa, L.L.C. after abandonment of the contest and cancelled claims 1–24 of the ’637 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner’s failure to file mandatory notices, a preliminary response, a response to the Petition, and a response to the Order to Show Cause and failure to take any other substantive action are consistent with abandonment of the contest. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the challenged claims are appropriate.” slip op. at 3
NonePatents in suitUS 7,480,637 - PTAB · Feb 20, 2025 · IPR2024-01259 · APJ Kristen L Droesch · IPR · Institution
Instituted IPR on all challenged claims 1–15 and all petition grounds because Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’794 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 8–9. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation, functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, for the purpose of institution and to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“3. “Inherent Resistance” Claim 10 uses the term “inherent resistance of the light source to which the light resistor is attached.” See Ex. 1001, 14:46–48. Petitioner asserts that “there is no ‘inherent resistance’ of an LED, but only the resistance of the LED at any particular operating current flowing through, and voltage across, the LED.” Pet. 21 (citing Ex. 1013, 29 ¶¶ 6–9). Petitioner also points out that the term inherent is not used in the ’794 Patent Specification. See id. Patent Owner does not explicitly address “inherent resistance” in terms of a claim construction. See Prelim. Resp. 6–9. In any event, when addressing an alleged lack of motivation to combine the teachings of the references, Patent Owner compares and contrasts incandescent bulbs, which according to Patent Owner, have an inherent resistance, and LEDs, which according to Patent Owner, do not exhibit self-regulating resistance. See Prelim. Resp. 20 (citing Ex. 2002 ¶ 67); see also id. at 23 (similar argument, citing Ex. 2002 ¶ 73). Indeed, Patent Owner asserts that “the word resistance is not useful when describing LEDs as opposed to incandescent bulbs. . . . LED lights have an exponential current vs. voltage relationship . . . rather than a linear current vs. voltage relationship as found in a simple resistance, such as seen in incandescent light bulbs.” Id. at 20 (citing Ex. 2002 ¶ 66). For the purpose of institution, we understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. To the extent the parties disagree with our understanding, we invite the parties to provide further briefing on the meaning of “inherent resistance” of a LED light source.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 31 ¶ 3; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See Prelim. Resp. 2. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’794 Patent Specification and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,533,794 - PTAB · Feb 20, 2025 · IPR2024-01258 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–14 on every asserted ground, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’252 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 7–8. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation, functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, for the purpose of institution and to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“For the purpose of institution, we understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. To the extent the parties disagree with our understanding, we invite the parties to provide further briefing on the meaning of “inherent resistance” of a LED light source.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 32; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See Prelim. Resp. 2. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’252 Patent Specification and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,096,252 - Uber Technologies, Inc. v. Enovsys LLCInstitution deniedPTAB · Nov 22, 2024 · IPR2024-00825 · APJ Andrew L Nalven · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“Step 1 of Figure 7 begins by obtaining the geographic information of the area to search for possible remote targets. Id. at 8:57–59. In step 2, the next geographic region where a possible search for a PRU is estimated. Id. at 8:64–66. In step 3, a page is sent out to that geographic region for remote units in the region to reveal their location. Id. at 9:2–4. In steps 4 and 5, if remote units are identified in the paged area, that information is forwarded to the network and the process continues to step 7 where the process is aborted. Id. at 9:4–6. Step 6 is performed if no units are identified in the paged area. Id. at 9:6–9. There, a check is done to establish if there are any remaining cells or grids higher up in the chain to be searched, and if so, the process returns to step 2 to search additional geographic areas. Id. at 9:9–12. The iterative process described in Figure 7 is consistent with Patent Owner’s proposed construction requiring forwarding a notification to only one or more PRUs currently located in a specific geographic boundary. Ex. 2001 ¶ 55; see also Ex. 1001, 8:32–54 (describing a grid search technique that may be implemented by the process of Figure 7).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent.” Pet. 8 (citing Ex. 1002 ¶¶ 28–30). Patent Owner does not dispute Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are further not persuaded by Petitioner’s argument that forwarding notifications to the PRUs only within a specified geographic region renders element 12[D]’s step of verifying whether the PRUs exists within said region unnecessary. Pet. 35 n.8. Rather, we credit Mr. McAlexander who testifies that forwarding notifications to individually pollable geographic boundaries “does not obviate the need for the PRU to identify that the notification has been received or verify its location within the individual geographic boundary before responding.” Ex. 2001 ¶ 155.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,199,726 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing grantedPTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751
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.