• Charter Communications, Inc. v. Iarnach Technologies Ltd.Some claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01287 · APJ Russell E Cass · IPR · Final written decision

  Claim 5 is unpatentable over Bernstein alone or with Tsuge; claims 1–3 and 6–11 were not shown unpatentable because the asserted grounds fail to teach required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. In the Preliminary Response, Patent Owner stated that it “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill,” Petitioner “has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. In the Institution Decision, we adopted Petitioner’s proposed definition of a person of ordinary skill in the art, finding that it was consistent with the ’982 patent and the asserted prior art. Inst. Dec. 14 (citing Okajima, 261 F.3d at 1355).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Following the Institution Decision, both parties submitted proposed claim constructions in the district court stating that the preamble is limiting. Ex. 2009, 3–4 (Petitioner’s Preliminary Claim Construction Chart); Ex. 2010, 7 (Patent Owner’s Preliminary Claim Construction Chart). Patent Owner states in the Patent Owner Response that “[t]he parties now agree that the entire preambles of both claims 1 and 6 are limiting.” PO Resp. 17. In its Reply, Petitioner states that “whether the Board finds the phrase ‘service auto-configuration’” in the preamble to be limiting is “immaterial” because it “does not affect the analysis of whether the prior art cited in the petition invalidates [the challenged] claims.” Pet. Reply 5. At the oral hearing, Petitioner acknowledged that it does not dispute that the entire preamble of claims 1 and 6 is limiting. Tr. 20:25–21:17, 23:15–17. Because the parties agreed in district court that the entire preamble of claims 1 and 6 is limiting, and also agree in this proceeding, we find that the preambles of claims 1 and 6 are limiting for purposes of this Decision. We will discuss the meaning of the preamble further in the sections below applying the prior art to the claims. See §§ III.A..4(a), III.A.7, III.C.1(a), III.C.7, infra.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Based on the record before us, and for purposes of this Decision, we do not need to, and do not, construe any other claim terms to resolve the controversy before us. See 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))).” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Based on the full trial record, we find that Petitioner has failed to meet its burden to show that Bernstein recites a “service auto-configuration” method as recited in the preamble of claim 1. As discussed above, the parties agree that the preamble of claim 1, including the “service auto-configuration method” language, is limiting. See § II.B, supra. As we explained in the Institution Decision, the Petition does not set forth a construction of “service auto-configuration method” or explain how the prior art discloses a “service auto-configuration method.” Pet. 11, 24; Inst. Dec. 32. Instead, the Petition merely explains how Bernstein teaches “a DOCSIS Provisioning of EPON (DPoE) system,” without explaining how it teaches a “service auto-configuration method.” Pet. 24 (citing Ex. 1005 ¶ 59). By failing to offer a construction of “service auto-configuration method” or explain how this limitation is met by the prior art, the Petition fails to show by a preponderance of the evidence that the prior art discloses or suggests this limitation.” slip op. at 34

  Patent outcomesUS 9,287,982 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,287,982
• Kia Corp. / Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Jan 26, 2026 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–5 and 7–21 are unpatentable over Kleve-based grounds; claim 6 was not shown unpatentable because the record did not support obviousness of key sharing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner asserts a person of ordinary skill in the art would have “had at least a four-year undergraduate degree in electrical engineering, automotive engineering, or a closely related field and at least two years of experience in the field of access control systems, vehicle electronics, and/or cryptography.” Pet. 8–9 (citing Ex. 1004 ¶ 85). Dr. Almeroth supports Petitioner’s position and further testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1004 ¶ 85. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and appears to apply Petitioner’s proposed level of skill. See PO Resp. Patent Owner’s declarant, Dr. Malek, explicitly adopts Dr. Almeroth’s level of skill in the art but states that his opinions would be applicable under any reasonable definition for an ordinarily skilled artisan at the critical time. See Ex. 2021 ¶ 38. For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’659 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We do not agree with Patent Owner’s argument that Dr. Almeroth’s declaration testimony contradicts Kleve. See PO Resp. 27–29. Rather, as discussed previously, we find that Kleve’s vehicle owner can set a restriction, such as the rental start period, prior to step 214 in Kleve’s Figure 2 and that such restrictions can be associated with the e-key. We also do not agree with Patent Owner’s argument that (1) Dr. Almeroth’s declaration testimony contradicts his deposition testimony or that (2) Dr. Almeroth “admitted his testimony was wrong.” See PO Sur-Reply 7 (citing PO Resp. 47–48 (citing Ex. 2022, 27:5–10, 27:21–28:1; Ex. 2021 ¶ 96)). In a particular embodiment to which Dr. Almeroth was citing, he noted that the e-key is always generated after the rental agreement. See Ex. 2022, 26:14– 20. Then the following exchange occurs: Q. So you use typically and always. So always does not refer to all of the embodiments of Kleve, is that fair? A. I think a person of skill in the art could read Kleve and understand that there are probably multiple ways in which the flow of actions among the parties could occur. And I think thinking about a real world scenario, in most cases you have an agreement before you would generate an eKey, but maybe, maybe not. I don’t -- I don’t know that the real world is necessarily cut and dry. So reading -- a person reading Kleve would understand it’s describing embodiments where it’s scenario, but I don’t know that it would necessarily be a hard and fast rule in every embodiment or in the understanding a person of skill in the art would have. Id. at 28:3–20. There is nothing in the deposition testimony by Dr. Almeroth that appears inconsistent with his declaration testimony nor does there appear to be the kind of admission touted by Patent Owner. Instead, it is Dr. Malek who takes an overly narrow view of Kleve that appears inconsistent with Kleve’s disclosure when read as a whole. See, e.g., Ex. 2021 ¶¶ 82–88. Therefore, we do not credit or agree with Dr. Malek’s testimony that Kleve fails to teach the concept of a virtual key created with the agreed-upon rental period as a restriction. See id. ¶ 57. Thus, based on the entire trial record, we find that Petitioner has” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “After review of the arguments and evidence, we agree with Petitioner’s position. Specifically, we agree that (1) both Kleve and Hatton are directed to use of electronic key systems for vehicles (see Ex. 1005 ¶¶ 7– 9, 39, 63; Ex. 1008, 1:48–52, 1:61–2:2, 5:25–34) and (2) encrypted communications would have been understood to be effective in preventing unauthorized access to the vehicle, something that is taught explicitly by Hatton (see Ex. 1008, 9:50–63). Given these disclosures by Kleve and Hatton, we find that a person of ordinary skill in the art would have had a at the challenged claims. Accordingly, we find that a person of ordinary skill in the art at the critical time would have had a reason to combine the teachings of Kleve with that of Hatton.” slip op. at 36

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Petitioner’s argument appears to be purely hindsight analysis based on the teachings of the ’659 patent and the limitations of challenged claim 6 because there is insufficient evidence or teachings in the cited prior art to suggest the sharing of virtual keys. Petitioner’s argument that having “rental microbusiness” implemented as a “smart phone application” that enables sharing virtual keys is insufficient to show obviousness, because, as noted by Patent Owner, certain embodiments in Kleve appear to discourage or even hinder the sharing of virtual keys. These embodiments require the use of credentials associated with the virtual key, where the credentials can be “facial recognition, voice print recognition, matrix barcode (ex. two-dimensional code), code word or phrase for speech recognition, temporary mobile web login IDs and password, or other types service.” See Ex. 1005 ¶ 37. Dr. Almeroth testifies that multiple people could be authorized on the same vehicle if they collectively rent a vehicle and that a person of ordinary skill in the art would “have been motivated to enable each user to share the virtual key with other authorized users associated with the same rental request.” Ex. 1004 ¶ 55. But given Kleve’s disclosure that the system handles key generation and distribution (Ex. 1005 ¶ 39), the evidence does not show that a person of ordinary skill in the art would have wanted to give this control to each authorized user who has received an e-key. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Kleve’s teachings undermine Petitioner’s position, and do not support a finding of obviousness. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Kleve alone or in combination with Hatton would have rendered dependent claim 6 obvious to a person of ordinary skill in the art at the critical time.” slip op. at 39

  Patent outcomesUS 11,738,659 mixed
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,738,659
• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Dec 18, 2025 · PGR2019-00056 · APJ Stacey G White · PGR · Remand

  Claims 2–7, 9–19, 21–25, 27, 30, 31, and 33 are unpatentable as obvious; Petitioner did not prove claims 8, 20, 26, 28, 29, and 32 unpatentable.

  RulingsRemand decision

  • RemandMixed

    “The Federal Circuit found that “[t]he factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan,” concluding “[n]othing more is required to establish a motivation to combine.” Everstar II, 2025 WL 1501940, 4. The Federal Circuit observed that “Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1,” and accordingly, “reverse[d] the Board’s patentability determination as to that claim and vacate[d] the Board’s judgment as to the remaining claims of the ’037 patent,” remanding to us for further proceedings. Id. at 4–5. With those instructions in mind, we review the Petitioner’s allegations regarding claims 2–33.” slip op. at 6

  • Skill levelSkill level board ownDecided for patent owner

    “F. Person of Ordinary Skill in the Art In the First Final Written Decision, we determined that a person of ordinary skill in the art “would have (1) at least two years of experience in the design of decorative lighting, or (2) at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Paper 40, 12. We see no reason to depart from that earlier determination.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties agree that we do not need to construe any claim terms. Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Patent Owner did not dispute that the combined teachings of Kumada and Debladis ’120 disclose each limitation of claim 1. Patent Owner, however, did dispute Petitioner’s proposed reasons for combining Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous art. PO Resp. 36–61. The Federal Circuit stated that substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120. The factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan. Nothing more is required to establish a motivation to combine. Given that Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1, we reverse the Board’s patentability determination as to that claim and vacate the Board’s judgment as to the remaining claims of the ’037 patent. Everstar II, 2025 WL 1501940, 4 (internal citations omitted). The Federal Circuit further noted Patent Owner’s secondary considerations arguments as to claim 1 and stated [t]he cited evidence consists only of a temporal connection between the introduction of Willis’s invention and the UL 588 standards, and deposition testimony of a single witness who seemingly disclaimed any connection between the two. This is not sufficient to rescue a claim as to secondary considerations. Id. at 4, n. 5 (internal citations omitted). Accordingly, the Federal Circuit ruled that claim 1 would have been obvious over Kumada and Debladis ’120. 6. Analysis of Independent Claim 33” slip op. at 17

  Patent outcomesUS 10,222,037 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,222,037
• Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79

  • BurdenNot shown unpatentable

    “Anticipation is not an ipsissimis verbis test, but “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65

  Patent outcomesUS 9,171,268 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,171,268
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under §103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-00322 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under § 103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Unified Patents, LLC v. Digimedia Tech, LLCAll claims unpatentable
  PTAB · Jan 12, 2024 · IPR2022-01182 · APJ John A Hudalla · IPR · Final written decision

  Claim 6 is unpatentable as obvious over Chiu and Gu; the Board made no patentability determination for claim 16 because its scope was indefinite.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Karam, Petitioner contends a person of ordinary skill in the art “would have had a Bachelor’s Degree in Computer Science, Computer Engineering, or Electrical Engineering, and two or more years of experience working with image processing or visual perception based video coding.” Pet. 10 (citing Ex. 1002 ¶¶ 36–37). Patent Owner does not address the level of ordinary skill in the art. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “or more,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’532 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “described as “pixels or groups of pixels” rather than “elements of an image.” This is supported by the ’532 patent specification’s discussion of “very small details in a frame” being “1–4 pixels” and “much larger details” being “up to 11 pixels.” Ex. 1001, 6:66–7:2. Indeed, Patent Owner’s counsel conceded at the oral hearing that details can be groups of pixels or even a 4 As discussed below (see infra § II.E.3), Patent Owner introduces an earlier internet dictionary printout and a dictionary volume excerpt for “detail” at Exhibits 2005 and 2007, respectively, with its opposition to Petitioner’s motion to exclude. See Exclude Opp. 5–6 (citing Exs. 2005, 2007). We find Patent Owner’s introduction of Exhibits 2005 and 2007 to be improper and untimely, so we disregard Exhibits 2005 and 2007. See infra § II.E.3. Patent Owner also cites certain college course notes in Exhibit 2003 to support its construction of “details” (see PO Resp. 11), but we accord no weight to Exhibit 2003 in light of Patent Owner’s statement that this exhibit is illustrative only and not substantive extrinsic evidence of the meaning of any claim term. See PO Resp. 13 n.2; Exclude Opp. 7; see infra § II.E.2. single pixel. Tr. 20:23–22:2. Furthermore, the specification sheds no light on what might constitute an “element of an image,” which makes Patent Owner’s proposal imprecise. Instead, Patent Owner’s proposal regarding “elements of an image” appears to be based entirely on a particular 2023 internet dictionary definition (see Ex. 2001, 1 (definition 2d)), which is extrinsic evidence that does not overcome the description in the specification. See McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091, 1099 (Fed. Cir. 2020) (“[T]he existence of one broader meaning in the field is not controlling. What matters is the meaning most appropriate in the context of the particular patent.”). Patent Owner’s dictionary evidence also merits little to no weight given the lack of evidence or testimony linking this particular definition to the understanding of an ordinarily skilled artisan as of the earliest possible effective filing date. See Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1322–23 (Fed. Cir. 2015) (“The terms used in patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee, as it would have been understood by a person of ordinary skill in the field of the invention on reading the patent documents”); Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (“A [tribunal] construing a patent claim seeks to accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention”). For these reasons, we determine that “details” relate to pixels or groups of pixels.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “temporally separating . . . details of said frames” is not limited to full-frame analysis and includes per-pixel analysis as part of analyzing a frame. Indeed, Patent Owner acknowledges that the ’532 patent describes per-pixel operations. PO Resp. 16–17 (citing, inter alia, Ex. 1001, 9:13–15, 11:2–4) (describing both intra-frame and inter-frame processing related to pixels). Even if this were not the case, we are persuaded by Petitioner’s argument that image filtering, even when applied to an entire frame, is performed by applying filters to individual pixel values. Pet. Reply 12 (citing Ex. 1002 ¶¶ 81, 85). This is supported by Dr. Karam’s unrebutted testimony, which itself is supported by other contemporaneous references in the record that she cites. Ex. 1002 ¶¶ 29, 81, 85; see also Ex. 1018 (“Jayant”), 1395 (discussing “block-by-block” motion compensation in successive frames); Ex. 1019 (“Wu”), 802 (“One approach to selective high-pass filtering . . . is to calculate the output of the filter whenever the high-pass operator covers pixels from at least two different regions, where there is a possibility that it is in the vicinity of an edge.”). Thus, we decline to limit “spatially and temporally separating” to full-frame analysis. And, as discussed in further detail below, Petitioner’s cited prior art discloses both per-pixel and per-frame filtering (see infra § II.D.3.b), thus making this aspect of Patent Owner’s construction unnecessary to resolve the instant controversy. 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))).” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner also shows that Gu teaches the recited “separating” even under Patent Owner’s proposed construction, i.e., Gu’s calculation of the functions mg(x, y), bg(x, y), and ild(x, y, n) “set[s] apart, isolate[s], and divide[s]” spatial and temporal information from a frame. See, e.g., Ex. 1006, 10:13–15, 10:34–11:28, 11:34–43. This is backed by Dr. Karam’s unrebutted testimony, which we credit, that an ordinarily skilled artisan “would have understood these functions to be forms of separating details because they relate neighboring pixels to one another, both within the frame to which they belong and between frames.” Ex. 1002 ¶ 84. Although Patent Owner argues that calculating Gu’s functions does not amount to “a disclosure of separating pixels from a frame” (PO Resp. 23), Patent Owner’s argument does not square with its own conception of the similar “separating” operations disclosed in the ’532 patent (i.e., spatial-temporal analyzer 50 generating “filtered frames” and “difference frames”). Id. at 12 (citing Ex. 1001, 6:30–34, 7:5–6, 11:53–56).” slip op. at 27

  Patent outcomesUS 6,473,532 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,473,532
• Celltrion, Inc. v. Chugai Seiyaku Kabushiki Kaisha, Genentech, Inc., And Hoffmann-La Roche Inc.All claims unpatentable
  PTAB · Aug 29, 2023 · IPR2022-00578 · APJ Tina E Hulse · IPR · Final written decision

  Claims 1–12 are unpatentable: claims 1–3 and 6–11 are anticipated by NCT ’653, and claims 4, 5, and 12 are obvious over combinations including NCT ’653.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “of individuals” is not conventional. Dec. Inst. 8. We therefore found a POSA “would have been an individual with an M.D. specializing in the treatment of autoimmune disorders and having several years of experience treating patients with such disorders, including rheumatoid arthritis, or having several years of experience researching treatments for autoimmune disorders, including rheumatoid arthritis.” Id. We also clarified that such a POSA “may alternatively (or also) have a Ph.D. and would have access to individuals skilled in clinical medicine, pharmacokinetics and formulation.” Id. Patent Owner agrees with Petitioner’s definition and notes that a POSA according to our definition from the Institution Decision “would be unable to develop [the claimed inventions] without assistance from other individuals.” PO Resp. 7–8 (citing Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256–57 (Fed. Cir. 2007). Patent Owner, however, fails to consider the full scope of our definition. Specifically, Patent Owner does not account for the clarification that a POSA “would have access to individuals skilled in clinical medicine, pharmacokinetics and formulation.” Dec. Inst. 8. When considering our complete definition, we do not discern a substantive difference between our definition and the parties’ definition of a POSA. Petitioner appears to agree. Pet. Reply. 1 n.1 (“The challenged claims are unpatentable no matter which definition of a POSA is used.”).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “Here, the Specification reveals that “per dose” does not mean “per injection.” Indeed, the Specification treats those terms differently. For example, in describing “the invention,” the Specification repeatedly follows “per dose” with an exemplary parenthetical or clause specifying the frequency of administration. For example, the Specification states that “the invention concerns a method of treating an IL-6-mediated disorder . . . wherein the anti-IL-6R antibody is administered as a fixed dose of 162 mg per dose (e.g. administered every week or every two weeks).” See Ex. 1001, 4:33–38 (emphasis added); see also id. at 5:4–8 (stating “[t]he invention also concerns a method of treating an IL-6-mediated disorder . . . wherein the anti-IL-6R antibody is administered as a fixed dose of 324 mg per dose or 648 mg per dose (e.g. every four weeks or once every month)”) (emphasis added); 24:54–59 (stating “the invention provides a method of treating an IL-6 mediated disorder . . . wherein the anti-IL-6R antibody is administered as a fixed dose of 162 mg per dose (e.g. every week, every two weeks, or every ten days)”) (emphasis added). Thus, the Specification repeatedly interprets the term “per dose” to describe the frequency of the dose, and not the number of injections to administer the dose. In contrast, when specifying a single injection, the Specification uses the terms “per injection” or a “single dose.” For example, the Specification states, “[a]vailable subcutaneous formulation is in a 1 mL prefilled syringe delivering 0.9 mL 162 mg TCZ per injection.” Id. at 49:55–56 (emphasis dose of 0.9 mL corresponding to a dose of TCZ 162 mg TCZ”) (emphasis added). Thus, although the Specification makes clear when a single injection is used by stating “per injection” or “single dose,” the ’264 Patent does not use either of those terms in the claims.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Whether to treat a preamble as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in Cir. 2003). The Federal Circuit “has not hesitated to hold preambles limiting when they state an intended purpose for methods of using a compound.” Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1342 (Fed. Cir. 2021). Where, as here, the claims are directed to methods of using a composition for a specific purpose (i.e., treating rheumatoid arthritis), and the method comprises a single step of administering that composition, the Federal Circuit “has generally construed statements of intended purpose in such method claims as limiting.” Id. at 1340. Moreover, as Patent Owner notes, the preamble provides antecedent basis for terms in the body of the claims. That is, the preamble recites “treating rheumatoid arthritis (RA) in a patient” and the claims recite “administering to the patient” (claims 1 and 10), “the RA patient” (claims 3– 5), and “administering to the RA patient one or more additional drug which treats the RA” (claim 6). Thus, considering the claims as a whole and the invention described in the patent, we determine the preamble of the claims to be limiting. See Eli Lilly, 8 F.4th at 1343 (finding preamble limiting where it provides antecedent basis for terms in the body of the claims). slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for patent owner

    “benefit.” Ex. 2009 ¶ 54. Patent Owner and Dr. Silverman, however, ignore the other half of the Specification’s definition of “treatment,” which states: “‘Treatment’ of a subject herein refers to both therapeutic treatment and prophylactic or preventative measures.” See Ex. 1001, 15:1–2 (emphasis added). Thus, limiting the definition of “treatment” to mean only “therapeutic treatment,” as Patent Owner asserts, is inconsistent with the express definition in the Specification and, therefore, incorrect on its face. See Phillips, 415 F.3d at 1316 (stating “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.”). Moreover, the Specification defines the term “effective amount” as “an amount of the antibody that is effective for treating the IL-6 disorder.” Id. at 15:3–4. If “treatment” of the IL-6 disorder required efficacy, it would not be necessary for the Specification to define an “effective amount” for treating the disorder separately, as efficacy would be implicit in the term “treatment.” Consistent with this, the Specification defines certain subjects as “inadequate responder[s]” to various medications because they have experienced “an inadequate response to previous or current treatment . . . because of toxicity or inadequate efficacy.” Id. at 14:46–61 (emphasis added). Thus, the Specification uses the term “treatment” to encompass treating a patient with a certain medication, regardless of safety or efficacy.” slip op. at 19

  Patent outcomesUS 8,580,264 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,580,264
• Bytedance Ltd. / Tiktok Inc. v. Triller, Inc.All claims unpatentable
  PTAB · Apr 19, 2022 · IPR2021-00099 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Beauregard and Hozumi; the other asserted anticipation and obviousness grounds were not shown.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “synchronizing . . . from a first beginning, the selected audio track at substantially the same time as a second beginning of capturing each video take of the plurality of video takes.” Patent Owner characterizes this term and the “beginning-beginning synchronization requirement.” PO Resp. 24 (emphasis omitted). Petitioner argues that this element “does not require ‘a first beginning’ and ‘a second beginning’ to be at the beginning of the audio track, but rather are a matching point between the audio track and the video clip.” Pet. 17. Patent Owner agrees with what was preliminarily determined in the Institution Decision, i.e., the “beginning-beginning requirement means that the ‘beginning’ of the audio track and the video take occur at the same time.” PO Resp. 18 (citing Inst. Dec. 19 (citing Ex. 1001, 26:63–67, Figs. 6A–6C, Fig. 7A). Thus, according to Patent Owner “the audio track must be playing while the video take is being captured.” Id. at 12 (citing Ex. 2009 ¶ 30). Petitioner argues that applying the plain meaning or Patent Owner’s proposed construction does not change the result and construction is not (Fed. Cir. 2011) (“claim terms need only be construed to the extent necessary to resolve the controversy.”)). We agree with Petitioner, and because applying either the plain and ordinary meaning or Patent Owner’s proposal, which we find is consistent with the plain and ordinary meaning, does not affect our final decision below, no express construction of this term is necessary. The third appearance is for “synchronized” and recites “at least two video takes of the plurality of video takes synchronized with the selected audio track.” Neither party argues any construction for this appearance and we apply the plain and ordinary meaning of “synchronized” as it appears in limitation 1.4. slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Consistent with the preceding, nothing in the Specification precludes a “video take” from being the same as or including a “video clip” or other piece of video. The Specification states that “each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track.” Ex. 1001, 10:24–26 (“each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track”). A “video take” is described as “a plurality of captured video takes synchronized to a selected audio track.” Id. at 11:4–6. Based on this, we find that a person or ordinary skill would have understood the Specification as describing a “video take” as sometimes the equivalent video clip or segment of video. See Ex. 1001, 10:24–26. We agree with Patent Owner that a “video take” is a continuous recording. Petitioner agreed during the ’663 Lawsuit claim construction process that a video take is “continuous.” PO Resp. 14–15 (citing Ex. 2011,6 8 (“agree any stoppages of recording (e.g., pausing) and restarting is not allowed”); Ex. 2012,7 4). Accordingly, we determine that “video take”” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Person of Ordinary Skill in the Art Petitioner alleges: A person of ordinary skill in the art as of the Critical Date of the ’429 Patent (“POSITA”) would have been a person with a working knowledge of digital video and audio technologies. The person would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. TIKTOK-1003, ¶12. Alternatively, the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Id. Pet. 6. Patent Owner does not comment on Petitioner’s proposal or propose an alternative. On this record, we adopt Petitioner’s proposed description of a person of ordinary skill, which is consistent with the disclosure in the ’429 patent and the cited prior art.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As to the reasons supporting the combination, Patent Owner focuses narrowly on the users of the Beauregard system and not what a person of ordinary skill in the art would have understood from the combination of Beauregard and Hozumi. Patent Owner cites no authority for its argument that a lack of “coordination and communication” between Beauregard’s users is required for a person of ordinary skill in the art to have had reason to make the proposed combination. Cf. In re Etter, 756 F.2d 852, 859–60 (Fed. Cir. 1985) (Patent Owner’s arguments regarding use are “basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the stated in the Shamos Declaration are unsupported by facts and thus entitled to little or no weight. See Ex. 2009 ¶ 115; 37 C.F.R. § 42.65(a). Although the references being in the same field of art is not conclusively a reason for a person of ordinary skill to make the combination, it is a factor. KSR, 550 U.S. 401 (“When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.”). As for Patent Owner’s argument about hindsight reasoning (PO Resp. 69), “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Petitioner provides persuasive evidence that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Hozumi with Beauregard based on the disclosures of Hozumi and Beauregard and the evidence of the knowledge of a person of ordinary skill in the art at the time of the ’429 patent’s filing date. See, e.g., Pet. 53–56; Ex. 1003 ¶¶ 80–82. This is not evidence of hindsight bias. Patent Owner does not identify, and we do not discern, any particular knowledge used by Petitioner in its combination of Beauregard and Hozumi that was gleaned only from the ’429 patent’s disclosure and was not within the level of ordinary skill in the art at the time of the invention. and motivation for combining the teachings of Hozumi with Beauregard is sufficient. See Pet. 53–56.” slip op. at 37

  Patent outcomesUS 9,691,429 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,691,429
• Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.Some claims unpatentable
  PTAB · Feb 2, 2022 · IPR2020-01336 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 4, and 6 are unpatentable as obvious over Oliaei; claims 3, 5, 7, 10–17, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of ordinary skill in its Response. See generally PO Resp. Patent Owner’s declarant, Dr. Peter Kinget, testifies that Petitioner’s proposed level of education and experience for a person of ordinary skill is reasonable. Ex. 2002 ¶ 9. For purposes of this decision, we adopt Petitioner’s proposal because it is consistent with the ’463 patent and the asserted prior art and not disputed by Patent Owner.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. §42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).1 Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner contends it has construed all claim terms according to this standard, but does not propose any express constructions. See Pet. 32–33 (citing Ex. 1002 ¶¶ 20, 22, 134–135). Patent Owner does not expressly address claim construction of any claim terms in its Response. See generally PO Resp. We determine that no formal constructions of any specific terms or words in the claim are necessary in this proceeding.” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Overall, we find Dr. Holberg’s testimony particularly telling, and not very persuasive, with respect to combining Oliaei and Vittoz. Dr. Holberg makes clear that a person of ordinary skill in the art would have analyzed Oliaei’s circuit, and in particular any switches that were of concern, before implementing charge injection compensation circuitry. See, e.g., id. at 25:8– 26:22 (Dr. Holberg describing for a pacemaker amplifier circuit he designed “I definitely did a lot of analysis because I had to deal with the DC value, so I did a lot of analysis on the charge injection impact.”). Dr. Holberg did not, however, provide any technical analysis or circuit performance simulations in his original declaration showing that Oliaei would benefit from Vittoz’s charge injection compensation circuitry. See Ex. 1002 ¶¶ 200–218. Also, in his original Declaration, Dr. Holberg testified that “[a] POSITA could have combined the common-mode circuit and the common-mode feedback circuit of Oliaei with the impedance matching circuit of Vittoz using the known modeling methods disclosed by Vittoz.” Ex. 1002 ¶ 202 (citing Ex. 1012, 101–105, Fig. 7). The mere fact that the prior art reference could be modified does not satisfy the requirements for a finding of obviousness. Indeed, even if Vittoz’s charge injection circuit could be implemented in Oliaei’s CMFB circuit, and “a POSITA would recognize Vittoz’s balancing capacitors and dummy switches would operate in substantially the same way, whether in the system disclosed by Vittoz or the system disclosed by Oliaei,” as Dr. Holberg testifies, this does not explain persuasively why a person of ordinary skill in the art would have added Vittoz’s charge injection circuitry into Oliaei’s CMFB circuit.” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed

    “Considering all the evidence of record, we agree with Patent Owner that Petitioner has not asserted sufficient rationale for the combination of Oliaei and Vittoz. See PO Resp. 51–77; Ex. 2002 ¶¶ 71–103. Petitioner alleges similarities between Oliaei and Vittoz and that the resulting combination, based on a desire to compensate for charge injection, would have predictably yielded the claimed system. Pet. 77–81. The arguments and evidence are deficient, however, for several reasons. First, as discussed above, we considered Petitioner’s assertion that a person of skill in the art would consider charge injection as a reason to look to Vittoz. Pet. 77. The evidence from both Dr. Holberg and Dr. Kinget is clear, however, that charge injection is not always necessary or compensated for in every switched capacitor circuit. See, e.g., Ex. 2003, 39:16–18 (Dr. Holberg stating that “I’m sure I’ve never put charge compensation circuitry on every switch. I’m sure of that.”). Second, Petitioner’s evidence including simulations of the combined Oliaei and Vittoz teachings, together with Patent Owner’s simulation evidence, illustrate that there are no clear-cut improvements in Oliaei’s circuit. The experts’ simulations, as a whole, show that by choosing particular parameters Oliaei’s circuit performance might be improved, and choosing other reasonable parameters would not improve circuit performance. With results of the simulations going both ways, the evidence is not persuasive that the combination would have yielded a predictable result. Third, the alleged rationale of adding charge injection compensation does not address sufficiently the reason a person of ordinary skill in the art would combine the relevant teachings of Oliaei and Vittoz. Oliaei expressly discloses that the inventors undertook “numerous” simulations to address issues of clock-feedthrough glitches, i.e., charge injection, and that the results showed no impact of charge injection on system performance. Ex. 1007 5:17–32. Without sufficient explanation, Petitioner and Dr. Holberg have failed to present a persuasive rationale for the alleged combination.” slip op. at 49

  Patent outcomesUS 7,012,463 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,012,463

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.