- Geneoscopy, Inc. v. Exact Sciences CorporationAll claims unpatentablePTAB · Feb 5, 2026 · IPR2024-01330 · APJ Ryan H Flax · IPR · Final written decision
Claims 3, 4, and 12–19 are unpatentable as obvious under each asserted ground.
RulingsFinal written decision- Skill levelOther
- Expert testimonyOther
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“embody claims of the ’746 patent, the product has features not covered by the ’746 patent’s claims, some of which are critical unclaimed elements according to Patent Owner. Accordingly, Cologuard is not coextensive with the challenged claims, and no nexus between the product and the challenged claims is shown on this record.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“developed where the patient need not manipulate their fecal sample to portion it, but the law of obviousness does not require an option to be the best option to be obvious. For these reasons, bearing in mind that the ultimate burden here is always on Petitioner, we are not persuaded by Patent Owner’s argument. We also reject Patent Owner’s argument that only impermissible” slip op. at 60
Patent outcomesUS 11,970,746 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,970,746 - Viant Techology LLC v. Intent Iq, LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2024-00422 · APJ Scott B Howard · IPR · Final written decision
The Board held claims 1–152 unpatentable based on the asserted obviousness grounds and struck Section II of Petitioner’s reply claim-construction brief.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Decision issues pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “Contracted to Display a TV Ad Petitioner argues that the term means “contracted to display any form” slip op. at 14
- Strike new argumentGranted
“FURTHER ORDERED that Section II of Petitioner’s Reply Claim Construction Brief is stricken from the record; and” slip op. at 80
Patent outcomesUS 7,861,260 unpatentableClaim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Viant Technology, Inc. v. Intent Iq, LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2025-00128 · APJ Scott B Howard · IPR · Final written decision
The Board held claims 1–152 unpatentable based on obviousness grounds and struck Section II of Petitioner’s Reply Claim Construction Brief.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“1. “Contracted to Display a TV Ad Petitioner argues that the term means “contracted to display any form” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“d) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Baig, Costa, and Zwicky. 5. Analysis of Claims 2–5, 7–9, 12, 15, 17, 21, 22, 24, 26–28, 31, 32, 34, 37, 42, 44, 53, 54–58, 61, 62, 69, 71–80, 83, 84, 86–88, 91, 94, 96, 100, 101, 103, 106, 116–119, 122, 125, 128, 135, 137– 145, 147, 148, 151, and 152 Petitioner argues that the combination of Baig, Costa, and Zwicky teaches the limitations recited in claims 2–5, 7–9, 12, 15, 17, 21, 22, 24, 26–28, 31, 32, 34, 37, 42, 44, 53, 54–58, 61, 62, 69, 71–80, 83, 84, 86–88, 91, 94, 96, 100, 101, 103, 106, 116–119, 122, 125, 128, 135, 137–145, 147, 148, 151, and 152 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 28–60; 422Pet. 29–51. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Lett. See Pet. 28–60; 422Pet. 29–51. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own. Patent Owner does not separately address those claims. See PO Resp.; 422PO Resp. Instead, Patent Owner only relies on the arguments discussed above for claim 1. See PO Resp. 13–16; 422PO Resp. 13–16. For the same reason as discussed above in Section II.D.4(b), we do not agree with Patent Owner’s arguments regarding the reason to combine the references. Accordingly, Petitioner has shown by a preponderance of the evidence” slip op. at 50
- Strike new argumentNew argument disregardedGranted
“F. Sua Sponte Striking Section II of Petitioner’s Reply Claim Construction Brief Our order allowing post-hearing claim construction briefing stated that “[t]he parties may not address any issues besides claim construction.” Paper 38, 1. Despite that order, Section II of Petitioner’s Reply Claim Construction Brief addresses obviousness under Patent Owner’s proposed construction. See Pet. Reply Post-hearing Br. 2–3 (Titled: “The Petition’s Obviousness Theory Renders Claims 121 and 146 Obvious Even Under Patent Owner’s Improper Construction.”). Because the section is in violation of our order, we sua sponte strike that section. See 37 C.F.R. § 42.12.” slip op. at 74
Patent outcomesUS 7,861,260 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Viant Techology LLC v. Intent Iq, LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2024-00421 · APJ Scott B Howard · IPR · Final written decision
The Board held claims 1–152 unpatentable over the asserted prior art and struck Section II of Petitioner’s reply claim construction brief.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“d) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “Contracted to Display a TV Ad Petitioner argues that the term means “contracted to display any form” slip op. at 14
- Strike new argumentGranted
“F. Sua Sponte Striking Section II of Petitioner’s Reply Claim Construction Brief Our order allowing post-hearing claim construction briefing stated that “[t]he parties may not address any issues besides claim construction.” Paper 38, 1. Despite that order, Section II of Petitioner’s Reply Claim Construction Brief addresses obviousness under Patent Owner’s proposed construction. See Pet. Reply Post-hearing Br. 2–3 (Titled: “The Petition’s Obviousness Theory Renders Claims 121 and 146 Obvious Even Under Patent Owner’s Improper Construction.”). Because the section is in violation of our order, we sua sponte strike that section. See 37 C.F.R. § 42.12.” slip op. at 74
Patent outcomesUS 7,861,260 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Geneoscopy, Inc. v. Exact Sciences CorporationAll claims unpatentablePTAB · Jul 9, 2025 · IPR2024-00459 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–20 are unpatentable as obvious under § 103 over each of the six asserted grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Here, as in our Institution Decision, we do not discern a significant difference between the parties’ respective proposed definitions beyond the number of years of experience after obtaining a doctoral degree. Compare Pet. 12, with Prelim. Resp. 47, and Resp. 19–20; see also DI 7–8. Under either proposed definition, the ordinarily skilled artisan would have been very highly skilled and educated. For purposes of this Final Decision, we maintain that Patent Owner’s definition appears to be reasonable (and it falls between Petitioner’s two definitions asserted in the reexamination request and in the Petition). Further, Patent Owner’s proposed definition appears to comport with the level of skill in the art reflected in the prior art of record and the ’781 patent itself, for example, Vilkin’s authors are a group of medical doctors and an editor of the journal is a PhD, Joost Louwagie, the named inventor of the ’781 patent, holds a PhD in Biochemistry, and the authors of Itzkowitz are medical doctors and PhDs. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)); see Ex. 1005, 3 (list of authors); Ex. 1016 (Dr. Louwagie profile); Ex. 1055; see also generally Reply (Petitioner did not contest our similar determination at Institution). Therefore, we adopt and use Patent Owner’s definition of the ordinarily skilled artisan, set forth above. C.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim construction is necessary in this proceeding. See generally Pet. Similarly, Patent Owner states that it “does not believe that claim construction is necessary to resolve patentability” in this proceeding. Resp. 21. “[W]e need only construe terms ‘that are in controversy, and 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that no construction of any claim term is necessary for purposes of our Final Decision. D.” slip op. at 14
- Expert testimonyOther
“Pet. 12. In support of these grounds for unpatentability, Petitioner relies on, inter alia, the 1st and 2nd Declarations of Duncan Whitney, PhD. Ex. 1002; Ex. 1080. In support of its positions, Patent Owner relies on, inter alia, the 1st and 2nd Declarations of Vadim Backman, PhD, and the Declaration of Peter Wood. Ex. 2001; Ex. 2022; Ex. 2023.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have no reasonable doubt that aspects of the Cologuard product practice the invention of the ’781 patent’s claims 1 and 3, which are most generally directed to steps of collecting two portions of a fecal sample at home, and combining a respective buffer stabilizer/preservative with each of the two portions for claim 1, and then processing those fecal samples by testing for blood and nucleic acids (e.g., DNA) for claim 3. These appear to be nearly the most basic steps for using the Cologuard kit. See generally Ex. 2032. And, these steps do illustrate a certain ease of use and consumerfriendliness that may be a contributing factor in Cologuard’s success. See, e.g., Ex. 2022 ¶¶ 140–142, 155, 158–159, 170–171.” slip op. at 25
Patent outcomesUS 11,634,781 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,634,781 - Apple Inc. v. Willow Laboratories, Inc.All claims unpatentablePTAB · Jun 26, 2025 · IPR2024-00296 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–4, 6, 8, 10–13, 15, 17, 19–21, 23–26, and 28 are unpatentable as obvious over Abdul-Hafiz and Raley, or over Abdul-Hafiz, Raley, and Secker.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“appear to be that Patent Owner specifies that the POSITA’s knowledge and experience may include optical sensors and that the POSITA may have a degree emphasizing software. We do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies. Moreover, both parties agree that the POSITA would have a working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 22; Ex. 2079 ¶ 37. Nonetheless, we find the additional specificity of Patent Owner’s definition to be helpful. Also, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’911 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the POSITA. We note, however, that we would reach the same outcome under either definition of the POSITA. See also PO Resp. 12 (Patent Owner asserting “under any proposed level of skill, the claims’ patentability is confirmed for at least the reasons set forth below.”).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Kenny’s explanation finds support in Raley, and we find his explanation credible. Ex. 1079 ¶¶ 9–11. We agree that Raley’s opening 26 has a vertical depth. In order for emitters 21, 22, 23, 24 to be flush with opening 26 as depicted in Raley’s Figure 3 (see PO Resp. 17–18 (arguing that LEDs are flush with opening 26)), the opening must have a depth to accommodate the thickness of the emitters. We further agree that opening 26 is within a solid body, namely interconnect cable 20. We also agree that, in view of the structure and function of Raley’s probe 40 and interconnect cable segment 20, a POSITA would have understood opening 26 is designed to receive the emitters therein. Given that Raley’s interconnect cable segment 20 includes opening 26 that is designed to receive emitters 21, 22, 23, 24 therein, Petitioner has persuaded us that Raley’s LEDs are recessed into a cavity under both the plain and ordinary meaning of “cavity” and Petitioner’s construction from the Delaware Litigation.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“testimony regarding a POSITA’s understanding of Figure 11B of Abdul-Hafiz. Ex. 2079 ¶¶ 87–88. More pertinent to claim construction, however, is a POSITA’s understanding of the claim term in view of the Specification. See, e.g., Phillips, 415 F.3d at 1315 (“As we stated in Vitronics, the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Circ. 1996))). In this regard, Petitioner points to Dr. Madisetti’s Rebuttal Expert Report, which was submitted on behalf of Patent Owner in the Delaware Litigation, where, upon reviewing the Specification of the ’911 patent for written description support for the claims, Dr. Madisetti testifies that “[a] POSITA would have known that the detection surface area of a given detector is essentially the entire surface area of the detector.” Ex. 1082 ¶ 912. During oral argument, Patent Owner attempts to reconcile the apparent inconsistency between this testimony and Patent Owner’s proposed construction. Tr. 34:20–36:12. In particular, Patent Owner asserts that, according to the ’911 patent Specification, the entire surface of the light-detecting side of the detector is the area that light reaches because there is “nothing blocking the entire area of the of the light-detecting side of the detector from receiving light.” Id. at 35:12–13. Patent Owner’s assertion, however, ignores EMI shield grid 2444 and foil 2450 that are placed on and at least partly cover the light-detecting side of the detector. Ex. 1001, 13:38–53, Fig. 24. Accordingly, we find Dr. Madisetti’s testimony regarding a POSITA’s understanding of the Petitioner’s construction, and we adopt Petitioner’s construction of “a detection surface area of the at least one detector” as the surface area of the light-detecting side of the detector.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“reasons against it in the Sur-reply, we are persuaded that a POSITA would have found it obvious to modify Abdul-Hafiz’s aperture to have an area smaller than the detection surface area to prevent optical noise sources such as ambient light and piped light reaching the detector. We disagree with Patent Owner that Petitioner does not explain why a POSITA would have made Abdul-Hafiz’s aperture smaller than the detection surface area. Preventing optical noise sources explains why a POSITA would have made Abdul-Hafiz’s aperture smaller than the detection surface area because making the area of the aperture smaller than the detection surface area helps prevent optical noise sources from reaching the detector. Even if Abdul-Hafiz’s low noise housing 400 and fixed shield 1005 mitigate optical motivation to make something better. See Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[W]e have repeatedly held that an implicit motivation to combine exists . . . when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”). Adding an additional protection against optical noise by limiting the diameter of Abdul-Hafiz’s aperture would have enhanced the optical noise mitigation of the low noise housing and fixed shield. Moreover, apart from Abdul-Hafiz, Petitioner does not identify in the prior art an opening having a smaller area than a detection surface area. Petitioner, however, identifies a known relationship between the size of the opening relative to the detection surface area and preventing optical noise from ambient light and piped light. Pet. 50 (citing Ex. 1004 ¶¶ 3, 33); Reply 11–12 (citing Ex. 1011, 96–97, Fig. 6.6; Ex. 1079 ¶¶ 30–32; Ex. 1080 ¶ 73; Ex. 1081, 12:51–63, 14:19–47, 14:28–47). When one parameter is known to influence a specific result, such as the size of the opening relative to the detection surface area preventing optical noise, discovering the optimum value of the parameter is generally obvious. See In re Boesch, 617 F.2d 272, 276 (Fed. Cir. 1980) (“Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” (citing In re Antoine, 559 F.2d 618 (CCPA 1977); In re Aller, 220 F.2d 454 (CCPA 1955))). Furthermore, we agree with Petitioner that the proposed modification to Abdul-Hafiz, namely reducing the area of the aperture to be smaller than the detection surface area, is simple and that a” slip op. at 43
Patent outcomesUS 10,984,911 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,984,911 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,400,358 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,561,104 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 14, 2025 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 7, 9, 32, 38, and 40 are unpatentable as anticipated by Spain and obvious over Spain as evidenced by Agiwal.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems. That person would have at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 18 (citing Ex. 1008 ¶ 44). Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. PO Resp. 13. 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the application and provisional application for the ’753 patent were filed before this date, the pre-AIA version of §§ 102, 103 apply. See Ex. 1001, codes (22), (60). Petitioner does not dispute that the filing date of the provisional application filing date applies. See Pet. 6; see generally Pet. Reply. 2 US 2003/0064735 A1, published April 3, 2003 (Ex. 1006). 3 Ankur Agiwal, LOCATOR – Location Estimation System For Wireless LANs, WMASH 2004: Proceedings of the Second ACM International Workshop on Wireless Mobile Applications and Services on WLAN Hotspots, 102–109 (2004) (Ex. 1005). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s additional requirements of evaluating the calibration data to determine the boundaries of the area should not be included in the construction of “grid point.” Instead, based on the full record, and for the reasons explained below, we discern no reason to alter our prior construction in the Institution Decision of “grid point” as “a point associated with representative calibration data for an area.” Dec. 22– 23.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The evidence supports that Petitioner has sufficiently demonstrated that Spain teaches “generating one or more sets of grid points for said calibration data,” as recited in limitation [1.2]. Spain states that: In another embodiment, the database is built by taking fingerprint measurements at predetermined locations and using intelligent algorithms that interpolate the fingerprints at all locations in between the sampled locations. Ex. 1006 ¶ 101. Relevant to this disclosure, Mr. Williams testifies that “Spain discloses generation of sets of grid points wherein each set includes newly interpolated grid points” because “the two grid points used to interpolate an additional grid point or points and the generated additional grid point or points are collectively a generated ‘set’ of grid points (i.e., a ‘set’ which includes the two calibrated grid points and the associated interpolated grid points).” Ex. 1008 ¶¶ 76–77 (citing Ex. 1006 ¶¶ 54, 55, 101). It is not disputed that Spain’s “fingerprints” are calibration data having characterizing parameters, such as observed signal strength, observed at calibration points. See Ex. 1006 ¶ 35. We find that this evidence demonstrates that Spain discloses generating one or more grid points, where the grid points are associated with calibration data.10 Accordingly, the evidence provides support that Spain’s interpolation of fingerprints at different locations discloses generation of one or more sets of grid points, where the grid points are associated with calibration data. Spain also discloses that: . . . the fingerprint corresponds not to one exact spot on the surface of the earth, but instead to a small area. The Lat and Long fields in this embodiment indicate a position inside the area, preferably the center point.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Discussion Petitioner refers to Agiwal to note that, like Spain, “Agiwal discloses an initial approximate location-based search of its database using live measurement data transmitted from a mobile device.” Pet. 18. Petitioner, however, relies only on Spain for its obviousness assertions. Id. at 22–38. The above discussion and Petitioner’s showing related to anticipation by Spain also equally apply to the obviousness showing over Spain as presented by Petitioner. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Patent Owner presents no additional arguments specifically directed to Petitioner’s showing as to obviousness under Spain that we have not already addressed. See generally PO Resp. Patent Owner also presents no evidence of objective indicia of nonobviousness. See generally PO Resp. Weighing the record as a whole in view of the findings and analysis above, we conclude that Petitioner has met its burden to show, by a preponderance of the evidence, that claims 1, 7, 9, 32, 38, and 40 would have been obvious over Spain as evidenced by Agiwal.” slip op. at 43
Patent outcomesUS 8,406,753 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,406,753 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 14, 2025 · IPR2023-01211 · APJ Brian D Range · IPR · Final written decision
Claims 4 and 26 are unpatentable: claim 4 is anticipated by Shkedi, and claims 4 and 26 are obvious over Zhu and Spain.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’494 patent. Namely, the ’494 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:58–4:2. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’494 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim words “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Id. at 18–20.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 11–12. We adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and 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 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit Mr. Williams’s testimony that determining which calibration data is representative of an area “would not require analysis” because “[i]t could be just the actual measurement,” and “analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:10–22. Patent Owner’s argument that this testimony is not instructive because Mr. Williams limited his responses to the construction of calibration data and avoided responding to the question asked is not persuasive. See Sur-reply 8–9. Although Mr. Williams did refer to “the calibration data construction” in his response, we disagree that he avoided responding to the question asked. He was asked: “To determine which of that calibration data is representative of an area would require analyzing that set of collected calibration data, right?” and directly responded: “It would not require analysis. It could be just the actual measurement.” Ex. 2023, 37:10–16. This testimony responded to the question asked. He then stated: “I believe that is an issue as part of the calibration data construction,” before concluding: “So analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:17–22. Merely expressing a belief that the issue or question asked relates to the calibration data construction does not equate to his response being limited to the calibration data construction.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, “grid points” and “calibration points” in the ’494 patent are distinct elements that can overlap. Specifically, a “grid point” is a point associated with representative calibration data for an area, and a “calibration point” is a point at which calibration data is collected. These points can occupy the same physical location (i.e., the same longitude/latitude coordinates) but still be a “grid point” and a “calibration point.” For these reasons, we are not persuaded that the overlap between “grid points” and “calibration points” in Shkedi undermines Petitioner’s position and evidentiary showing. Petitioner, thus, has established by a preponderance of the evidence that Shkedi teaches each element of claim 4 including non-uniform grid points. We determine that the preponderance of the evidence establishes that claim 4 is anticipated by Shkedi.” slip op. at 42
Patent outcomesUS 8,786,494 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,786,494
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.