- Spotify USA Inc. v. Manuel TijerinoInstitutedPTAB · Dec 17, 2025 · IPR2025-01280 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claim 1 is obvious over Laut, Kincaid, and Bongiovi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, for the reasons given below we determine the information presented in the Petition demonstrates there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’925 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“The Board’s Preliminary Analysis — Rationale to Combine Kincaid with Laut At this stage of the proceeding, based on the express disclosures of Kincaid and Laut, we are persuaded Petitioner’s rationale is sufficient to show that a “POSITA would seek to ensure consistent loudness across tracks to maximize customer satisfaction and would thus be motivated to combine Kincaid with Laut in order to correct these problems.” Pet. 27 (citing Ex. 1003 ¶ 65). Moreover, we credit Mr. Rosenblatt’s testimony that the “POSITA’s motivation would have been at least partially financial: improving the listeners’ experiences could increase demand for the jukebox, leading to” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’925 patent “would have had a Bachelor of Science degree and a Masters [sic] degree in Computer Science, Electrical Engineering, Computer Engineering, or an equivalent field, as well as one to two years of academic or industry experience in computer-based systems for digital audio distribution and playback, or comparable industry experience.” Pet. 3 (citing Ex. 1003 ¶ 28). Petitioner further asserts that the ordinarily skilled artisan “would have been knowledgeable about audio signal processing techniques, such as gain normalization and dynamic range compression, and software engineering.” Id. At this stage, Patent Owner does not specifically address the level of skill of the ordinary artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’925 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner incorrectly interprets the issued ’925 patent claim terms under BRI. Prelim. Resp. 2. Accordingly, at this stage of the proceeding, we decline to consider Patent Owner’s proposed constructions for claim 1 under the legally incorrect broadest reasonable interpretation standard, which is only applicable during prosecution before a patent examiner. As emphasized above, in interpreting the claims of the ’925 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2023). We further emphasize that 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). Based on our review of the current record, we determine that no express construction of any term is necessary to resolve this case for purposes of institution. We leave it to the parties to further develop during under the proper Phillips standard applied to IPR proceedings. See Phillips, 415 F.3d at 1313.” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,146,925 - PTAB · Dec 12, 2025 · IPR2025-00763 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Zeira alone or Zeira with Yi renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’838 patent based on all grounds set forth in the Petition for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 10 (citing Ex. 1003 ¶ 21). Patent Owner does not contest this at this stage. See Prelim. Resp. Petitioner’s proposed level of ordinary skill appears to be consistent with the problems addressed in the ’838 patent. See Ex. 1001, 1:30–2:48. Therefore, we adopt it for this decision.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“person of ordinary skill in the art would have understood that Zeira’s RRC message includes MAC timer information. Zeira explicitly discloses that the calculated duration information is transmitted to the WTRU. Ex. 1005 ¶ 74. Zeira also discloses that information to “[c]onfigure the MAC layer” is transmitted to the WTRU in the form of an RRC message. Id. ¶ 423. Further, the duration is calculated while considering the amount of time that the MAC layer would need to transmit the current buffered data. Id. ¶ 76. Given these disclosures, we find sufficiently credible Dr. Lo’s testimony that a person of ordinary skill in the art would have understood Zeira to disclose that the RRC message received by the WTRU includes MAC timer information, and that the extent it does not, it would have been a predictable variation, at the time of the claimed invention, to implement a timer relating to the duration of network resources at the MAC layer as Yi teaches. Ex. 1003 ¶¶ 74–87, 107–113.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,212,838 - PTAB · Nov 19, 2025 · IPR2025-00842 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–10 and 12–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
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 1–10 and 12–20 in the ’084 patent on all challenges included in the Petition.” slip op. at 2
- BurdenDecided for petitioner
“The Board’s rules require that a petition provide “a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board’s rules also require that a petition include “a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). Contrary to Patent Owner’s assertions, the Petition satisfies these rules. See Pet. 1, 20–119. Under the heading “Statement of Precise Relief Requested,” the Petition provides the following table:” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“earliest priority date “would have had a Bachelor’s degree in electrical or computer engineering, or a comparable field of study, plus approximately two to three years of professional experience with acoustic technology.” Pet. 5. Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. at 5–6. Dr. Kyriakakis’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 34–35. For purposes of the Preliminary Response only, Patent Owner relies on the Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 11. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’084 patent as well as the asserted references. See, e.g., Ex. 1001, 1:12–3:62, 36:49–39:8, code (57); infra §§ III.E.1–III.E.2.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,197,084 - PTAB · Nov 19, 2025 · IPR2025-00843 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–12, 14, and 16–20 on all four grounds, finding a reasonable likelihood that claim 1 is obvious over Li and Liao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2025). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a “person of ordinary skill in the art (“POSITA”) at the ’582 Patent’s earliest priority date (January 5, 2019), would have had a Bachelor’s degree in electrical or computer engineering, or a comparable field of study, plus approximately two to three years of professional experience with acoustic technology.” Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Petitioner notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. At this stage, Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner relies on the definition proposed by Petitioner because Petitioner has not shown that any challenged claims are unpatentable given this level of skill.” Prelim. Resp. 10. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of ordinary skill in the art, because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’582 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of ordinary skill in art).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“proposed combination of Li and Liao is based upon improper hindsight, because Patent Owner does not point to sufficient evidence of record that shows combining the teachings of the cited references in the manner proposed by the Petitioner would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Li teaches away from Petitioner’s proposed modifications to add a plug at each end of connecting component 113. See Prelim. Resp. 39, 41. A “reference does not teach away” if “it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Li expresses a general preference for connecting first housing 111 and second housing 112 to the two ends of first elastic metal wire 1131 in connecting component 113 by injection molding. Ex. 1004 ¶¶ 29, 35, dependent claims 2 and 7. For example, Li explains that “[o]ptionally, the first housing 111 and the second housing 112 are fixedly connected to both ends of the first elastic metal wire 1131 by injection molding.” Id. ¶ 29. Li does not “criticize, discredit, or otherwise discourage” using a plug to connect a housing to connecting component 113. See, e.g., id. ¶¶ 29, 35. Instead, Li discloses using plugs to mechanically connect components, i.e., to connect rear hook assembly 12 to “the first housings 111 of the two ear hook assemblies 11.” Ex. 1004 ¶ 58, Figs. 2, 9; see Ex. 1003 ¶¶ 57, 117, 122. Li similarly discloses using mechanical connectors comprising a clamping portion that engages with a locking portion to connect components, e.g., to “fix the first housing 111 and the third housing 114 together” and “fix the second housing 112 and the fourth housing 115 together.” Ex. 1004 ¶¶ 44–45. Li identifies these mechanical connectors as alternatives to adhesive bonding and “fasteners such as screws.” Id. ¶ 44; see id. ¶ 59 (identifying plugs as alternatives to “screw fixation”). Hence, we determine Li discloses a variety of ways to connect components in a bone conduction earphone but does not appear to “criticize, discredit, or otherwise discourage” any of those ways. See, e.g., Ex. 1004 ¶¶ 29, 35, 44–45, 58–59, Figs. 2, 9; see Ex. 1003 ¶¶ 57, 117, 121.” slip op. at 45
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,310,582 - PTAB · Oct 16, 2025 · PGR2025-00041 · APJ Justin T Arbes · PGR · Institution
The Board instituted PGR of claims 1–20 on all asserted grounds after finding claim 1 more likely than not obvious over Hendry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“a post-grant review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute a post-grant review as to claims 1–20 of the ’243 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science, electrical engineering, or a related field, and two years’ experience in data management or client-server systems and communications,” where “a higher education or skill level might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 35–39). Patent Owner did not file a Preliminary Response disputing Petitioner’s position. Based on the record presented, including our review of the ’243 patent and the types of problems and solutions described in the ’243 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“any reasonable construction.” Pet. 7. Patent Owner did not file a Preliminary Response disputing Petitioner’s position. We conclude that no express interpretation of any claim term is necessary to determine whether to institute a post-grant review in this proceeding.4 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)). 4 The parties, however, are encouraged to address during trial (1) interpretation of the term “user profile” in the challenged claims, particularly in view of the Specification’s apparent definition of the term “profile” (see Ex. 1001, col. 14, ll. 51–55) and description of exemplary data from which a “user profile” may be generated (id. at col. 18, ll. 40–58), and (2) the scope of the various instances of the phrase “in response to” in the challenged claims. Also, if either party intends to argue a claim interpretation during trial, including what the plain and ordinary meaning of a term is, the party should do so in a clearly designated section of its briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 44–49, 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’ meaning does not resolve the parties’ dispute.”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination based on a combination of references requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)); see also KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Also, “[t]hough less common, in appropriate” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 12,039,243 - PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–5 and 8–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Koskinen.
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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 7 (citing Ex. 1003 ¶¶ 19–21). Petitioner further argues that “[a]dditional education” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we need not expressly construe any claim terms.6 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Additionally, a person having ordinary skill in the art would have known and been familiar with information elements (IEs) that specified an RLC reordering timer value based on (1) general knowledge that IEs carried information in RRC messages and (2) that 3GPP TSs describe an IE carrying recording timer duration information for the RLC layer. See Ex. 1003 ¶ 151; Ex. 1014, 219–20. Accordingly, it would have been obvious to a person having ordinary skill in the art “that the PDCP timer information, which used similar variables as its RLC counterpart (Koskinen, ¶¶37-38), would also be carried in a PDCP configuration IE.” Ex. 1003 ¶ 151.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,863,573 - PTAB · Oct 8, 2025 · IPR2025-00629 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Beard and Laufer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of one or more claims of the ’711 Patent. We, therefore, institute inter partes review of claims 1–20 on the grounds identified in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace or avionics fields, or (2) at least four years of experience in any of the above industries. 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the applications from which the ’711 Patent claims priority were all filed after this date, the post-AIA version of §103 applies. See Ex. 1001, codes (60), (63). 2 U.S. Patent No. 9,769,387 B1, iss. Sept. 19, 2017 (Ex. 1009). 3 U.S. Patent App. Pub. No. 2017/0059692 A1, pub. Mar. 2, 2017 (Ex. 1010). 4 U.S. Patent App. Pub. No. 2012/0106800 A1, pub. May 3, 2012 (Ex. 1021). 5 U.S. Patent App. Pub. No. 2017/0161911 A1, pub. June 8, 2017 (Ex. 1007). 6 U.S. Patent App. Pub. No. 2013/0301905 A1, pub. Nov. 14, 2013 (Ex. 1024). 7 U.S. Patent App. Pub. No. 2012/0004844 A1, pub. Jan. 5, 2012 (Ex. 1025). 8 PCT App. Pub. No. WO 2017/123477 A1, pub. July 20, 2017 (Ex. 1022). 9 U.S. Patent App. Pub. No. 2017/0160751 A1, pub. June 8, 2017 (Ex. 1005). Pet. 8 (citing Ex. 1003 ¶¶ 50–54). Patent Owner does not presently dispute Petitioner’s proposed formulation. See generally Prelim. Resp. For purposes of this Decision, we adopt and apply Petitioner’s formulation regarding the level of ordinary skill in the art because it is (1) consistent with the ’711 Patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Singhose. B.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“But the Detecting Limitations of claims 1, 19, and 20, merely require that a target be “detected.” The Detecting Limitations do not require that target detection be performed “aboard the reference UAV,” and claim 19 does not recite or require “machine learning.” Moreover, the Specification makes clear that the claims should not be limited to aspects of the disclosed embodiments, as Patent Owner proposes to do here. See, e.g., Ex. 1001, 2:56–59 (“The invention is described in connection with such embodiments, but the invention is not limited to any embodiment. The scope of the invention is limited only by the claims . . . .”) Patent Owner additionally fails to cite any lexicographic definition or clear and unambiguous disclaimer of claim scope sufficient to limit the claims in the manner it proposes. We, thus, are not persuaded that the Detecting Limitations require “applying aboard the reference UAV a machine learning model to the capture image for: (i) identifying a target in the captured image.”” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Priority Date of the Challenged Claims Petitioner contends that claims 1–20 of the ’711 Patent “should not have priority to the October 9, 2016 filing date of U.S. provisional [patent] application 62/405,972 due to a lack of written description support.” Pet. 3. Petitioner thus “assumes” a priority date of October 1, 2017 (the filing date of U.S. Provisional Patent Application No. 62/556,449) for purposes of this proceeding. Id. at n.2; see also Ex. 1003, code (60). Patent Owner does not presently dispute Petitioner’s contention that the ’711 Patent is not entitled to a priority date earlier than October 1, 2017. See generally Prelim. Resp. For purposes of this decision, we accept Petitioner’s undisputed contention that the ’711 Patent is not entitled to a priority date prior to 10 Any determination, no matter how designated in this Institution Decision (except our ultimate decision to institute), is preliminary and non-binding. Our Final Written Decision, based on a fully developed record of arguments and evidence, will state our binding determinations, findings, and conclusions. If a party disagrees with this preliminary construction, or any other determination set forth in this Institution Decision, that party should present its arguments at trial. The parties are reminded that any arguments not made during trial will be considered waived. Patent Owner is further reminded that arguments in the Preliminary Response are not preserved and will be considered waived at trial unless those arguments are re-raised in the Patent Owner Response. The parties are additionally reminded that arguments raised in subsequent briefing must be set forth in full in the briefs themselves, and may not be incorporated by reference from prior filings such as the Preliminary Response. See 37 C.F.R. § 42.6(a)(3). October 1, 2017.11 Accordingly, Petitioner has made a sufficient showing that all of the cited references qualify as prior art. See Pet. 4–6. D.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,514,711 - PTAB · Oct 8, 2025 · IPR2025-00530 · APJ Scott C Moore · IPR · Institution
Instituted review of claims 1–9 on all petition grounds after finding a reasonable likelihood that claim 1 is obvious over Whitmarsh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of at least one of the challenged claims. We, therefore, institute inter partes review of claims 1–9 on the grounds asserted in the Petition. B.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“permission module,” as used in claim 1, has “a well understood structural meaning in the computer technology field.” 792 F.3d at 1350. Rather, the limitation in question is “drafted in the same format as a traditional means-plus-function limitation, and merely replaces the term ‘means’ with ‘nonce’ word ‘module,’ thereby connoting a generic ‘black box’ for performing the recited computer-implemented functions.” Id. And, while claim 1 recites the “outputs” of the permission module (i.e., a determination regarding the permissions of an aerial system), “the claim does not describe how the [permission module] interacts with other components in the [discrimination system] in a way that might inform the structural character of the limitation- in-question or otherwise impart structure to the [permission module] as recited in the claim.” Id. at 1351. We also reviewed the Specification, and we agree with Petitioner that the Specification identifies the following structure as corresponding to the claimed permission module: “storage on-board the disruption module 105, storage on-board the identification receiver 102, a remote computing system connected to the disruption module…, or [] any other suitable computing system.” See Pet. 12; Ex. 1001, 9:64–10:4. slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“from nearby UAVs wireless communications that include information or signatures unique to the UAVs, such as a MAC [media access control] address of the UAV, that is used to identify the transmitting UAV.” Pet. 16– 18 (citing Ex. 1005 ¶¶ 20, 27; Ex. 1006 ¶¶ 8, 10, 13, 15–17; Ex. 1003 ¶¶ 117–118). For example, Petitioner cites Whitmarsh’s teachings that “[a]ll drones have a unique identifier, such as a media access control (MAC) address, that can be determined or read by the DDS [drone defense system] and can be used to identify the drone.” Id. at 16 (quoting Ex. 1006 ¶ 13). Based on these teachings, Petitioner submits that the signal received from the UAVs includes an aerial system identifier signal unique to the aerial system. Id. at 17–18 (citing Ex. 1005 ¶ 27; Ex. 1006 ¶ 13).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,249,199 - PTAB · Oct 8, 2025 · IPR2025-00525 · APJ Scott C Moore · IPR · Institution
The Board instituted review of claim 21 on all asserted grounds after finding a reasonable likelihood it is obvious over Beard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of claim 21, the sole challenged claim. We, therefore, institute inter partes review of claim 21 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Pet. 21 (citing Ex. 1003 ¶ 47). Patent Owner does not presently dispute Petitioner’s proposed formulation. See generally Prelim. Resp. For 3 U.S. Patent App. Pub. No. US 2016/0253907 A1, published Sept. 1, 2016 (Ex. 1010). 4 PCT Pub. No. WO 2016/078093 A1, published May 26, 2016 (Ex. 1011). 5 PCT Pub. No. WO 2016/154949 A1, published Oct. 6, 2016 (Ex. 1012). 6 U.S. Pat. App. Pub. No. US 2016/0127890 A1, published May 5, 2016 (Ex. 1013). 7 PCT Pub. No. WO 2015/043123 A1, published Apr. 2, 2015 (Ex. 1014). purposes of this Decision, we adopt and apply Petitioner’s formulation regarding the level of ordinary skill in the art because it is (1) consistent with the ’959 Patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Chowdhary. B.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“But before describing the embodiments cited by Patent Owner, the Specification plainly states: “Any terms not expressly defined herein have their conventional meaning as commonly understood by those having skill in the relevant art(s).” Ex. 1001, 4:64–67. Thus, the Specification itself cautions against construing the claim terms such as “secure identifier” as limited to the scope of the disclosed embodiments. Here, Patent Owner has not cited any express definition of “secure identifier,” or identified any explicit disclaimer of claim scope that might justify narrowing the scope of this claim term to specific embodiments disclosed in the Specification. In the absence of such a definition or disclaimer, we are not persuaded that the scope of the claim term “secure identifier” should be limited to specific aspects of the preferred embodiments cited by Patent Owner. See Prelim. Resp. 7–14. On this record, and at this stage of the proceeding, we decline to adopt Patent Owner’s proposed construction and preliminarily construe “secure identifier” as “a credential that can be used to securely verify the identity of a device, such as an airborne object or ground-based transmitter.”8” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“’071 Application lack adequate written description support for the “secure identifier” claim limitation. For a patent claim to be entitled to the priority date of an earlier-filed application, the earlier application must provide complete written description support for the claim as required by 35 U.S.C. § 112(a). L.A. Biomedical Rsch. Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1057 (Fed. Cir. 2017) (“L.A. Biomed”). To satisfy this requirement, the written description must “reasonably convey” to a person of ordinary skill in the art that the inventor had possession on the claimed priority date of each limitation of the later-claimed subject matter. L.A. Biomed, 849 F.3d at 1057. It is not enough that an earlier application’s disclosure “renders the later-claimed invention obvious;” as “the disclosure must describe the claimed invention with all its limitations.” L.A. Biomed, 849 F.3d at 1057. On this record, we agree with Petitioner that the ’153 Provisional and ’071 Application lack adequate written description support for the “secure identifier” limitation of claim 21. We have preliminarily construed “secure identifier” as “a credential that can be used to securely verify the identity of a device, such as an airborne object or ground-based transmitter.” See supra § II.B. As discussed above, the Specification of the ’959 Patent does not use the term “secure identifier,” but the Specification contains extensive discussion of the need for an identification credential that is secure (e.g., difficult for a bad actor to clone or impersonate). See, e.g., Ex. 1001, 1:56– 65 (discussing the need for a system that is difficult to “clone”), 10:20–49 (discussing the need “trust” between a drone and ground-based equipment, and the need for a way to verifying the drone’s credentials), 11:5–12:62 (disclosing the use of encryption and a rotating SSID to generate a secure identifier for a drone). None of the portions of the Specification cited above is present in the ’153 Provisional or the ’071 Application. See generally Ex. 1006, 1007. The ’153 Provisional and ’071 Application discuss the need for identifiers for low-altitude aircraft (see, e.g., Ex. 1006, 2; Ex. 1007, 9), but there is no discussion of any need for an identification credential to be secure or resistant to cloning or impersonation. See generally Ex. 1006, 1007. The ’153 Provisional and ’071 Application do not disclose the use of encryption, SSIDs (much less rotating SSIDs), or any other technologies for the purpose of verifying the authenticity of an identification credential. See generally id. Based on our review of the ’153 Provisional and ’071 Application, we preliminarily conclude that neither of these applications would have reasonably conveyed to a person of ordinary skill in the art that the inventor then had possession of the concept of the “secure identifier” that was later claimed in the ’959 Patent.” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,713,959 - PTAB · Oct 2, 2025 · IPR2025-00673 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that Amazon would show at least one claim unpatentable over Shin and Aoyama.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“shown that there is a reasonable likelihood that it would prevail in demonstrating at least one of claims 1–7 of the ’675 patent is unpatentable. We begin our analysis with the principles of law that generally apply to an asserted ground based on obviousness, we then assess the level of skill in the art, next we provide brief overviews of Shin and Aoyama, and then we address the parties’ contentions with respect to independent claims 1, 6, and 7.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person having ordinary skill in the art” is a hypothetical construct, from whose vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Env’t Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or 4 At this stage in the proceeding, SoundClear does not present arguments or evidence of secondary considerations. See Prelim. Resp. more of these or other factors may predominate in a particular case.” Id. at 696–97. Relying on the testimony of Dr. Stern, Amazon argues the following: [a] person of ordinary skill in the art . . . would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately two years of industry or academic experience in a field related to controlling the audio output of electronic devices. Work experience could substitute for formal education and additional formal education could substitute for work experience. Pet. 7 (citing Ex. 1002 ¶¶ 28–32). In the Preliminary Response, SoundClear does not address Amazon’s assessment of the level of skill in the art. See Prelim. Resp. At this stage of the proceeding, we adopt Amazon’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’675 patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Stern.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“arguments and evidence for purposes of institution that would support determining that a person of ordinary skill in the would have been motivated to combine the teachings of Shin and Aoyama. As one example, Amazon contends that the proposed combination is merely the addition of one known element (i.e., “Aoyama’s natural language processing and information retrieval”) to another known element (i.e., “Shin’s voice processing and response device”) to obtain predictable results (i.e., “identifying a user’s intent and providing information responsive to such intent”). Pet. 19–20 (citing KSR, 550 U.S. at 417; Ex. 1002 ¶ 83). As another example, Amazon contends the proposed combination also represents the addition of one known element (i.e., “Aoyama’s word replacement” feature) to another known element (i.e., “Shin’s distance-based content abbreviation/simplification”) to obtain predictable results (i.e., “using word replacement to simply content for distant users”). Id. at 25–26 (citing KSR, 550 U.S. at 417; Ex. 1002 ¶ 100). Amazon also presents sufficient arguments and evidence for purposes of institution that would support determining there is a reasonable expectation of success in making the proposed combination. Id. at 20 (citing Ex. 1002 ¶ 84), 27–28 (citing Ex. 1002 ¶ 102; Ex. 1011 ¶¶ 97, 98 Fig. 7). To the extent SoundClear argues that Amazon is required to identify a problem a person of ordinary skill in the art would have sought to solve when combining the teachings of Shin and Aoyama, we do not agree. See Prelim. Resp. 31–32. This line of argument runs contrary to the principles of law articulated in KSR. In KSR, the Supreme Court emphasized “an expansive and flexible approach” to an obviousness evaluation. KSR, 550 U.S. at 415; see also Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1363 (Fed. Cir. 2018) (“KSR did not impose a rigid requirement to identify . . . a problem to be solved in the art . . . .”). The Supreme Court stated that, “[o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents,” amongst other things, “to determine whether there was apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Moreover, the Supreme Court explained that, “[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420.” slip op. at 26
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the preliminary record, we discern no deficiency in Amazon’s characterizations of Shin, Aoyama, or the general background knowledge in the art. In addition, for purposes of institution, we are persuaded by Dr. Stern’s testimony concerning the relevant disclosures in Shin and Aoyama. At this stage of the proceeding, SoundClear argues that Shin does not teach limitations 1[b]—“a voice classifying unit configured 1[b][i] to calculate a distance between the user and the output-content control device by a proximity sensor 1[b][ii] to classify the voice into either a first voice or a second voice based on the calculated distance.” See Prelim. Resp. 19–22. a. Limitations 1[b]—“a voice classifying unit configured to 1[b][i] calculate a distance between the user and the output-content control device by a proximity sensor to 1[b][ii] classify the voice into either a first voice or a second voice based on the calculated distance” In the Preliminary Response, SoundClear contends that Shin fails to teach voice classification because “Shin is incapable of distinguishing [between] multiple voices.” Prelim. Resp. 21. More specifically, SoundClear argues that Shin cannot teach classifying a voice into a first voice or second voice because “Shin never refers to a ‘first user’ or ‘second user’ or ‘multiple users.’” Id. (citing Ex. 1003 generally); see also id. at 26– 27 (arguing that Amazon misstates the record because Shin never discloses a “first voice” nor a “second voice”). Instead, SoundClear asserts that Shin only contemplates a single user (i.e., user 10) when calculating the distance between the user and an electronic device (e.g., Shin’s electronic device 100). Id. at 21–22 (citing Ex. 1003 ¶¶ 37, 38). Based on the preliminary record, Amazon presents sufficient evidence that would support a finding that Shin teaches “a voice classifying unit configured to calculate a distance between the user and the output-content control device by a proximity sensor to classify the voice into either a first voice or a second voice based on the calculated distance.” Pet. 10–14. Shin discloses that “processor 120 may determine an output scheme of corresponding content based on a distance between a user and the electronic device 101.” Ex. 1003 ¶ 53. Shin’s processor 120 accomplishes this distance calculation by using distance detection module 180, which may include various sensors, such as a proximity sensor. Id. ¶ 66; see also id. ¶ 153 (disclosing an embodiment where electronic device 901 includes sensor module 940, which, in turn, includes proximity sensor 940G). Shin’s Table 3 illustrates how the distance between the user and electronic device 101 determines the output scheme. Id. ¶ 86, Table 3. For instance, Shin’s Table 3 illustrates classifying the user’s voice input as a “first voice” when the distance between the user and electronic device 101 is between 1 to 2 meters, and classifying the user’s voice input as a “second voice” when the distance between the user and electronic device 101 is less than 1 meter. Id. ¶¶ 86, 87, Table 3.” slip op. at 23
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,244,675
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.