- Savant Technologies LLC D/B/A GE Lighting / Elong International USA Inc. et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Sep 14, 2026 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–11, 18–20, 23–25, and 28 are unpatentable as obvious over the two combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“¶ 39). Petitioner further relies on Stokes to teach an average particle size that preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.” Id. at 26–27 (citing Ex. 1108, 7:1–4). Petitioner argues that “a POSA would have been motivated to apply this principle to Krummacher, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 27 (citing Ex. 1102 ¶ 237). Petitioner notes that “[c]onversion of blue light to yellow light is improved by maximizing the scattering of blue light.” Id. In addition, Petitioner asserts that “[u]niformity is improved by preferentially scattering the concentrated light from the blue-light LED chip instead of the disperse light emitted by the phosphor.” Id. at 28 (citing Ex. 1102 ¶ 237). Petitioner contends that “[a] POSA would have had a reasonable expectation of success applying this principle to Krummacher, because the relevant particle size range includes the range disclosed by Krummacher.” Id. Petitioner argues that “[a] POSA would have recognized selecting an average particle size as a design decision to be made based on a number of factors, including the light scattering properties of the particles, and well within the skill of the art.” Id. (citing Ex. 1102 ¶ 238). We find this explanation and the supporting testimony of Dr. Doolittle well-reasoned and supported and entitled to significant weight. Thus, we find that Petitioner has shown by a preponderance of the evidence that the combination of Krummacher and Stokes teaches limitation 1[c], and that a person of ordinary skill in the art would have been motivated to combine the references in the manner proposed.” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“¶ 39). Petitioner further relies on Stokes to teach an average particle size that preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.” Id. at 26–27 (citing Ex. 1108, 7:1–4). Petitioner argues that “a POSA would have been motivated to apply this principle to Krummacher, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 27 (citing Ex. 1102 ¶ 237). Petitioner notes that “[c]onversion of blue light to yellow light is improved by maximizing the scattering of blue light.” Id. In addition, Petitioner asserts that “[u]niformity is improved by preferentially scattering the concentrated light from the blue-light LED chip instead of the disperse light emitted by the phosphor.” Id. at 28 (citing Ex. 1102 ¶ 237). Petitioner contends that “[a] POSA would have had a reasonable expectation of success applying this principle to Krummacher, because the relevant particle size range includes the range disclosed by Krummacher.” Id. Petitioner argues that “[a] POSA would have recognized selecting an average particle size as a design decision to be made based on a number of factors, including the light scattering properties of the particles, and well within the skill of the art.” Id. (citing Ex. 1102 ¶ 238). We find this explanation and the supporting testimony of Dr. Doolittle well-reasoned and supported and entitled to significant weight. Thus, we find that Petitioner has shown by a preponderance of the evidence that the combination of Krummacher and Stokes teaches limitation 1[c], and that a person of ordinary skill in the art would have been motivated to combine the references in the manner proposed.” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Finally, we do not agree with Patent Owner that “quantum efficiency” would have dissuaded a person of ordinary skill from making the combination. PO Resp. 36–38. To begin with, “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Here, as demonstrated by, at least, Shimizu and Stokes, blue LEDs in this wavelength range were known to work as light sources for white-light LEDs. See Pet. 30–31. Additionally, we find persuasive Petitioner’s evidence that a person of ordinary skill in the art would not have been concerned solely with quantum efficiency, but also with overall luminous efficacy of a complete white LED package. Reply 9. As Dr. Schubert’s textbook explains, A fundamental drawback of UV pumped white LEDs is the energy loss (Stoke’s shift). The potential luminous efficacy of UV pumped white LED lamps is, therefore, markedly lower than that of white sources based on a blue LED exciting a yellow phosphor. Ex. 2014, 358–59; see also Ex. 1148, 87:5–88:4 (acknowledging Stokes shift). Thus, the evidence shows that, whatever gain in quantum efficiency a lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, 437 F.3d at 1165. Indeed, Petitioner has shown several references—including, Shimizu and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Krummacher, Stokes, and Shimizu. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Krummacher, Stokes, and Shimizu with a reasonable expectation of success.” slip op. at 43
Patent outcomesUS 8,614,539 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,614,539 - Tesla, Inc. v. Charge Fusion Technologies, LLCAll claims unpatentablePTAB · Jul 13, 2026 · IPR2025-00153 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–30 are unpatentable as obvious under § 103 over the asserted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of one of ordinary skill in the art at the time of the invention. Tesla submits that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical or mechanical engineering (or an equivalent field) and at least two years of work experience involving automotive systems, including electric vehicle power management. . . . Additional industry 1 US 2009/0313034 A1, pub. Dec. 17, 2009 (Ex. 1004, “Ferro”). 2 EP 1,920,968 A1, pub. May 14, 2008 (Ex. 1005, “Oyobe”). 3 US 7,124,691 B2, iss. Oct. 24, 2006 (Ex. 1006, “Donnelly”). 4 Steven E. Letendre, The V2G Concept: A New Model for Power? PUBLIC UTILITIES FORTNIGHTLY, Feb. 15, 2002, at 16 (Ex. 1007, “Letendre”). 5 US 5,654,621, iss. Aug. 5, 1997 (Ex. 1078, “Seelig”). 6 US 6,662,083 B1, iss. Sep. 16, 2003 (Ex. 1010, “Knockeart”). experience or technical training may offset less formal education, while advanced degrees or additional formal education may offset lesser levels of industry experience. Pet. 2 (citing Ex. 1003 ¶¶ 14–15). Charge Fusion “takes no position with respect to Petitioner’s proposed level of ordinary skill.” PO Resp. 17. For purposes of our analysis, we apply Tesla’s proposed level of ordinary skill, which we find to be consistent with the problems addressed in the ’987 patent and the prior art. B. Claim Interpretation” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “dynamic attribute of an electric charge provider” In the Petition, Tesla proposes that we construe “dynamic attribute of an electric charge provider,” as recited in every independent claim, to mean “a changing or otherwise fluctuating cost (or price) of electricity for purchase from an electric charge provider.” Pet. 4–5. Charge Fusion responds that Tesla improperly narrows the meaning of this claim limitation. PO Resp. 15 (arguing this claim term “is not just limited to ‘changing or otherwise fluctuating cost (or price)’ as alleged by the Petition” (emphasis added)). Although we consider Tesla’s proposed construction to identify an exemplary “dynamic attribute of an electric charge provider,” we see no need to limit the meaning of this limitation as proposed by Tesla. Indeed, Tesla agrees. See Pet. Reply. 7 (arguing only that this claim limitation “at least includes” such an example). And Charge Fusion does not contend otherwise. See PO Resp 15 (arguing only that this limitation “is not just limited to” cost fluctuations). As such, we see no need to further construe this claim limitation. 2. “determine . . . a charging schedule for the vehicle” Limitation 1[g] recites “determine, based at least on the one or more charging preferences and at least one current value of a dynamic attribute of an electric charge provider, a charging schedule for the vehicle.” Independent claim 8, 15, and 22 recite a materially identical limitation. Tesla submits that this limitation should not be construed as a means-plus- function limitation under 35 U.S.C. § 112(6). See Pet. 5. Charge Fusion agrees that “nothing in the claim invokes [§] 112(6).” PO Resp. 16. As such, we discern no dispute regarding the meaning of this claim limitation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Initially, we note that, as claimed, there is no express restriction on the manner in which the “amount” or “charge” is specified or otherwise expressed. Indeed, the Specification uses both “desired charge percent level” and “desired charge range level” as alternative ways for a user to specify an “amount of charge.” Ex. 1001, 14:53–15:8 (emphases added). The Specification defines “desired charge range level” as meaning “a desired distance to travel.” Id. at 15:3–8. Elsewhere, the Specification describes that a user may specify the amount of charge as follows: “the user may indicate a desired charging level (and/or a desired charging level may be automatically calculated) based on a desired distance of travel.” Id. at 19:49–57 (emphasis added). More specifically, annotated Figure 7 of the ’987 patent, reproduced below, demonstrates how a user may select “amount of charge” in terms of a desired mileage range 720 or a percentage level 718. See Pet. Reply 2. As shown in red, annotated Figure 7 illustrates that a user selects “desired charge level 720” on “vehicle charge indicator 714” by moving a slider to a value specified in “miles” (e.g., 110 miles). The Specification, after discussing selecting a desired charge percent level 718, explains: The user may also or alternatively view and/or change the desired charge range level 720. An estimate of how far the vehicle can travel on a given charge amount (which may be a general average and/or may be computed based on a specific itinerary and/or past driving habits) can be determined, for example, and utilized to express the desired charge level in terms of distance capable of being traveled. In such a manner, for example, a user may determine a desired distance to travel (e.g., how far it is from home to work or vice versa) and may set the desired charge range level 720 to match the desired distance. Ex. 1001, 14:65–15:8. Thus, the Specification confirms that “amount of charge” may be expressed in terms of a desired mileage as well as a desired percentage level.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“We disagree. Charge Fusion’s reliance on Wonderland is misplaced and does not support the proposition for which it is cited. In Wonderland, the district court denied the accused infringer’s motion for summary judgment of invalidity, in part, because genuine issues of material fact existed as to whether there was sufficient motivation to combine the prior art. Wonderland, 988 F. Supp. 2d at 511. As such, the district court’s Wonderland decision does not constitute a final ruling on the motivation to combine issue, and the Federal Circuit’s summary affirmance of the district court’s ruling neither addresses the issue nor reflects how the issue was resolved at trial. See Wonderland NurseryGoods Co. v. Thorley Indus., LLC, 644 F. App’x 1011 (Fed. Cir. 2016). Moreover, contrary to Charge Fusion’s assertion, Tesla correctly notes that although Ferro refers to wireless charging, it provides no implementation details. Ex. 1004 ¶ 36; Ex. 2006, 54:8–55:9. Nonetheless, Ferro does describe manual options for initiating charging, and Tesla’s expert credibly testifies that one of ordinary skill in the art would have been motivated to apply Oyobe’s vehicle sensor to allow a user to initiate Ferro’s charging methods more easily without having to leave the vehicle. See Ex. 1003 ¶¶ 146, 151, 152 (citing Ex. 1004 ¶ 109). Accordingly, we find that Tesla establishes that one of ordinary skill in the art would have been motivated to incorporate Oyobe’s use of a sensor to establish presence of a vehicle near a charging station into Ferro’s system.” slip op. at 17
Patent outcomesUS 11,631,987 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,631,987 - Tesla, Inc. v. Charge Fusion Technologies, LLCAll claims unpatentablePTAB · Jul 13, 2026 · IPR2025-00152 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–17 are unpatentable as obvious: claims 1–4, 6–9, and 11–14 over Sutardja, Donnelly, and Letendre; claims 5, 10, and 15 with Seelig; claims 16 and 17 with Knockeart.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of one of ordinary skill in the art at the time of the invention. Tesla submits that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical or mechanical engineering (or an equivalent field) and at least two years of work experience involving automotive systems, including electric vehicle power management. . . . Additional industry experience or technical training may offset less formal education, 1 US 2008/0136371 A1, pub. Jun. 12, 2008 (Ex. 1011, “Sutardja”). 2 US 7,124,691 B2, iss. Oct. 24, 2006 (Ex. 1006, “Donnelly”). 3 Steven E. Letendre, The V2G Concept: A New Model for Power? PUBLIC UTILITIES FORTNIGHTLY, Feb. 15, 2002, at 16 (Ex. 1007, “Letendre”). 4 US 5,654,621, iss. Aug. 5, 1997 (Ex. 1078, “Seelig”). 5 US 6,622,083 B1, iss. Sep. 16, 2003 (Ex. 1010, “Knockeart”). while advanced degrees or additional formal education may offset lesser levels of industry experience. Pet. 2–3 (citing Ex. 1003 ¶ 29). Charge Fusion “takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 9. For purposes of our analysis, we apply Tesla’s proposed level of ordinary skill, which we find to be consistent with the problems addressed in the ’788 patent and the prior art. B. Claim Interpretation” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“shown in Figure 7 of the ’788 patent. Pet. 4–5. Charge Fusion responds that Tesla’s proposed construction should be rejected because it “wrongly import[s] embodiments from the specification.” PO Resp. 14–16. We discern no dispute over the meaning of “unitary vehicle charge indicator” because, contrary to what Charge Fusion argues, Tesla does not contend that this limitation is “required to be limited to” the bar graph embodiment of Figure 7, only that it “at least includes” that embodiment. Compare Pet. 5, with PO Resp. 14–16. Tesla also argues that the “first” and “second” portions of the unitary vehicle charge indicator—which indicate the charged and uncharged capacities of the battery—recite merely “communicative content,” and thus, are “not entitled to any patentable weight” because they are directed to nonfunctional printed matter. Pet. 5–7 (citing various case law). At the same time, however, Tesla maintains that “[r]egardless, Donnelly teaches a bar graph indicating the amount of charge and uncharged capacity.” Pet. Reply 11–12 (citing Pet. 33–34); see also Hrg. Tr. 74:22–25, 75:9–11. For reasons expressed below, we agree that Tesla persuasively demonstrates that the asserted combination teaches the “unitary vehicle charge indicator element” as claimed and construed by Charge Fusion. Accordingly, we need not decide the printed matter issue.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Initially, we note that, as claimed, there is no express restriction on the manner in which the “amount” or “charge” is specified or otherwise expressed. Indeed, the Specification uses both “desired charge percent level” and “desired charge range level” as alternative ways for a user to specify an “amount of charge.” Ex. 1001, 14:63–15:18 (emphases added). In particular, the Specification defines “desired charge range level” as meaning “a desired distance to travel.” Id. at 15:8–18. Elsewhere, the Specification describes that a user may specify the amount of charge as follows: “the user may indicate a desired charging level (and/or a desired charging level may be automatically calculated) based on a desired distance of travel.” Id. at 19:59–67 (emphasis added).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“full charge” for the battery, and thus, Tesla fails to explain how the combination of Sutardja with Donnelly’s battery bar graph image “would allow a user to select a specific amount of charge or how this would result in a unitary vehicle charge indicator,” as claimed. PO Resp. 30. According to Charge Fusion, “[l]imiting the single option of ‘full charge’ as described in Sutardja would defeat the purpose of implementing a slider” as taught by Donnelly. Id. (citing Ex. 2008 ¶ 72). We disagree. Charge Fusion’s argument rests on the mistaken premise that Sutardja only contemplates selecting a full amount of charge for the battery and not an amount below a full charge, i.e., a partial charge. But that is not what Sutardja says. More accurately, Sutardja teaches that the user specifies the amount of charge—"The user interface module 108 may comprise a key pad, a display, a microphone, and/or a speaker (all not shown). A user of the vehicle 102-1 may use the user interface module 108 to set charging parameters for charging the battery 14.” Ex. 1011 ¶ 243. Elsewhere, Sutardja teaches that the user may set a “predetermined level” of charge— The charge monitoring module 150 may inform the control module 112 when the battery 14 is charged to a predetermined level (e.g., full charge) that may be indicated in the charging parameters. Subsequently, the charge monitoring module 150 may stop charging the battery 14 by deactivating the converter 156 and the charging module 152. The power meter 24 may measure the amount of power received from the utility company 23 during the charging operation. Id. ¶ 270 (emphases added). Although that passage indicates that a “full charge” is an example of a “predetermined level” of charge, nowhere does it exclude the selection of a lesser amount. Indeed, the passage contemplates the ability to “stop charging the battery,” which indicates that selection of the predetermined level may be less than a full charge. Id. Thus, we are not persuaded by Charge Fusion’s argument to the contrary. Rather, in our view, Tesla demonstrates by a preponderance of the evidence that the Sutardja-Donnelly combination teaches a “unitary vehicle charge indicator” that includes at least “first” and “second” portions and that one of ordinary skill in the art would have had reason to successfully combine their respective teachings in a manner that allows a user to predetermine, i.e., specify, an amount of charge. slip op. at 17
Patent outcomesUS 11,990,788 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,990,788 - Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00253 · APJ Scott C Moore · IPR · Final written decision
Claims 1–10 were not shown unpatentable under either § 103 ground because the evidence did not establish a reason to combine the references or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent. D.I. 8. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’035 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Institution Decision, we construed the claim term “string separator character” to mean “a single-character string separator,” and invited the parties to raise any issues they had with this construction in future briefing. D.I. 10. Patent Owner subsequently indicated that it agreed with this construction. See PO Resp. 8. Petitioner did not raise any objections to this construction (see generally Pet. Reply). Accordingly, and in the absence of any dispute, we construe “string separator character” to mean “a single-character string separator.” Neither Petitioner nor Patent Owner ask us to adopt explicit constructions of any other claim terms. See Pet. 14, PO Resp. 8–9; Pet. Reply 1–23; PO Sur-reply 2–7. We also find that the issues in dispute can be resolved without construing any other claim terms. Accordingly, we do not adopt explicit constructions of any other claim terms. 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.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” See PO Resp. 26–27. Indeed, Petitioner has given little or no explanation of how one of ordinary skill in the art allegedly would have taken the “idea of incremental search” and applied it to Lotus Notes. See, e.g., Ex. 2021, 116:20–117:17 (Petitioner’s declarant, Dr. Terveen, testifying that “Raskin is not explicitly talking about searching across a set of documents, but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin simply does not teach a mode of incremental searching that applies to the query-style, document-finding searching of the type Petitioner cites from Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Mr. Haeberli contrasting the Lotus Notes searches cited by Petitioner with Raskin’s searches). Raskin even states that it is “difficult or impossible to implement incremental searches” using interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Mr. Haeberli’s testimony that this passage of Raskin “directly undermines Dr. Terveen’s suggestion that a POSITA would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 24
Patent outcomesUS 7,370,035 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,370,035 - Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00254 · APJ Lisa A Murray · IPR · Final written decision
Claims 1–20 were not shown unpatentable under either §103 ground because Petitioner failed to establish motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence then of record, including the asserted prior art and the ’490 patent. Dec. 9. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’490 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Decision on Institution, the only term that we found it necessary to construe was the term “string separator character” in claim 1. We preliminarily construed this term to mean “a single-character string separator.” Dec. 11, 30–31. We invited the parties to address the appropriateness of this construction over the course of the trial. Id. at 11, 31. In its briefing, Patent Owner agrees with the Board’s preliminary construction, arguing that it is “consistent with the intrinsic evidence.” PO Resp. 8 (citing Ex. 1001, claims 8 and 20). Patent Owner further argues that a person of ordinary skill would have understood a multi-character Boolean operator such as “AND” to be “a search syntax instruction rather than a string separator.” Id. at 9 (citing Ex. 1059, 162; Ex. 2001 ¶ 112). Petitioner’s Reply Brief does not address the issue of claim construction. See generally Reply Br.; see also Pet. 11 (“Unless otherwise noted, Petitioner applies the plain and ordinary meaning of all claim terms below.”). Following our review of the full record, we determine that it is not necessary to construe this or any other claim term for the purposes of this Decision.2 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.). In our analysis below, we interpret the language of the claims according to its plain and ordinary meaning.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Having reviewed the evidence of record, we find Mr. Haeberli’s testimony to be more persuasive and better supported by the evidence. According to Dr. Terveen, “[r]obust programming languages such as C and C++, together with well-developed operating system and UI frameworks, . . . allowed an ordinary programmer to build a UI that supported incremental searching, as evidenced by the numerous prior art systems that implemented such functionality, including Entourage, Eudora, Emacs, Canon Cat, SwyftWare, and others. Ex. 1100 ¶ 43 (citing Ex. 1004, 8–9, 161; Ex. 1021, 125, 127, 129; Ex. 1039, 102–103; Ex. 1043, 385–389). The relevant question, though, is not whether it would have been possible to build a user interface that supported incremental search, but whether it would have been “simple and straightforward” to execute an incremental search of multiple partial search strings on large, indexed multi-file databases such as those described in the Lotus Notes references, as Dr. Terveen alleges. None of the prior art discussed in the “State of the Art” section of Dr. Terveen’s initial declaration, taken individually or together, discloses incrementally searching a plurality of files using two partial search strings. See Ex. 1003 ¶¶ 32–33, 37, 40; Ex. 2001 ¶ 100. Thus, creating a user interface might be “simple,” but the evidence suggests that the back-end execution of an incremental search is not. See, e.g., Ex. 1021, 126 (Raskin, concluding that “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“different approach from that taken in Lotus Notes. The difference between Raskin’s sequential scanning method and the index-based system described in Wilcox is that sequential scanning by definition can only scan one document at a time as each document is loaded into a “buffer.” See, e.g., Ex. 2020 ¶ 35. Lotus Notes, however, only needs to load the index into memory for a user to be able to locate the single index entry identifying all instances of an indexed term across all indexed files. In fact, Raskin acknowledges that indexing may be necessary to maintain an acceptable response time. Ex. 1021, 132 n.10; see also id. at 129 (indexing speeds search times). Mr. Haeberli’s third and final reason for concluding that one of ordinary skill would not have been motivated to combine Raskin’s incremental search with Lotus Notes is that at the time using incremental searches would have presented “extreme technical difficulties.” Ex. 2001 ¶ 101. Here again we find Mr. Haeberli’s explanation more persuasive than Dr. Terveen’s opinion that combining the teachings from Raskin with Lotus Notes’ teachings “would have required only simple and straightforward software modifications.” Ex. 1003 ¶ 80. According to Mr. Haeberli, “there are serious technical challenges with implementing the complex search strategies of the challenged claims in the systems on which Dr. Terveen relies.” Id. ¶ 96. As Patent Owner argues: searching across a set of files to find specific files requires the system to identify which files are in the set, access those files (which are often not loaded in active memory), search their contents, determine which files contain matches to search criteria, and then present results to the user; all tasks that do not exist in the same way (or at all) for a search confined to text in a single open file already loaded into memory. Sur-Reply 9; see Ex. 2020 ¶¶ 15, 35–36. There would have been other challenges as well. For example, “[t]he type of sequential scanning typically employed to search a single open document is very time and resource intensive if employed to search a large set of documents.” Ex. 2020 ¶ 15. Also, “[i]mplementing incremental search in the Lotus Notes indexed system would necessarily require a larger index, which would slow down, rather than increase the search speed.” PO Resp. 23; see Ex. 2020 ¶ 33. Finally, Raskin itself concludes that “even if incremental searching is advantageous, ‘almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.’” Ex. 2001 ¶ 96 (emphasis added by Mr. Haeberli) (quoting Ex. 1021, 126). In short, Mr. Haeberli presents three significant reasons why there would have been no motivation or expectation of success in combining the teachings of Wilcox with those of Raskin. Dr. Terveen’s opinion to the contrary, on the other hand, is not supported by evidence. Dr. Terveen testifies that “[a] POSITA would have been motivated to perform Lotus Notes’ multi-string search incrementally for the reasons stated by Raskin: speed, effectiveness, and ease of use.” Ex. 1003 ¶ 78 (citing Ex. 1021 ¶¶ 125–127). The evidence, however, not only fails to support Dr. Terveen’s testimony, but also demonstrates that one attempting to make the proposed combination would not have reasonably expected the proposed combination to result in greater speed or effectiveness.” slip op. at 27
Patent outcomesUS 10,552,490 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,552,490 - Microsoft Corp. v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00255 · APJ William V Saindon · IPR · Final written decision
Claims 1–27 were not shown unpatentable under either §103 ground because Petitioner did not establish a persuasive reason to combine the cited teachings with adequate factual support.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation of the level of ordinary skill, or offer its own formulation in its Response. Patent Owner’s declarant, however, states: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that [Petitioner] has provided its own definition . . . . 31. I believe [Petitioner’s] definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Patent Owner’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent. Dec. on Inst. 8. Following a review of the full record, we agree that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Patent Owner’s for the purposes of this proceeding. We continue to view Patent Owner’s proposed definition as consistent with the ’139 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Petitioner does not assert any explicit claim constructions. Pet. 12. In our Decision on Institution, the Board construed “string separator character” as “a single-character string separator.” Dec. on Inst. 10, 28–29. Patent Owner explicitly agreed with this construction in its Response (Resp. 8–9), and Petitioner offered no further comment in its Reply. Although no claim construction issue is squarely before us now, we maintain our prior construction of “string separator character,” and do not construe any further limitations. 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We agree with Patent Owner that a problem with Petitioner’s combination is that it proposes to take the idea of incremental searching from Raskin and divorce it from Raskin’s teaching of incremental searching. See PO Resp. 20 (arguing, “a [person of ordinary skill in the art] must consider all the teachings of a reference, and not pick out general ‘concepts’ disclosed in the art without considering the context in which they are used”); see also id. at 17–28 (setting out the whole argument); Ex. 2020 ¶¶ 39–62 (Patent Owner’s declarant explaining why Petitioner’s approach is “technically problematic”). Raskin’s incremental search is tied to finding and moving to character strings within a document. Ex. 1021, 125. For example, if a user were to type a string that was found in the text, “the instance [of that string] is selected and the cursor placed immediately after the end of the selection.” Id. The cursor can move about the text as characters of the search string are added or deleted. Id. at 125–126. Thus, Raskin discloses in-text search, even when searching across documents. Id. at 132 (“After the local document has been completely searched the search then proceeds through the following documents until the end of the folder is reached, when the search continues from the beginning of the first document in the folder until the current, already searched document is reached. After cycling through the folder, the next larger domain is treated similarly, and so forth.”). Raskin even distinguishes its text-finding search from Lotus Notes’ document-finding search, stating that “[i]t is usually easy to tell in what domain you are searching, because you see the results in context; what you see is not just a list of file names, as with many present search systems.” Id. (emphasis added); see also PO Sur-reply 16 (citing the same page and arguing that “Raskin recommends doing the opposite of what is claimed”). This context gives credence to Patent Owner’s argument that “the search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” PO Resp. 26–27. Indeed, Petitioner has given little-to-no explanation of how one takes the “idea of incremental search” and applies it to Lotus Notes. Ex. 2021, 116:20–117:17 (Petitioner’s declarant testifying that “Raskin is not explicitly talking about searching across a set of documents [at once], but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin does not teach a mode of incremental searching that applies to the query-style, document-finding searching in Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Patent Owner’s declarant contrasting Lotus Notes and Raskin). Raskin even states that it is “difficult or impossible to implement incremental searches” using standard interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Patent Owner’s declarant stating that this passage “directly undermines [Petitioner’s declarant’s] suggestion that a [person of ordinary skill in the art] would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Entourage and what True is doing and how it is doing it, Petitioner asserts that it would have been obvious to use True’s two search strings “to provide more targeted searching, as was common sense and well known in the art.” Pet. 60 (citing Pet. 8–9; Ex. 1057, 27); see also id. at 56, 66 (similar). But we are not persuaded by a preponderance of the evidence that True provides more targeted searching or better search results when finding documents. True itself appears silent on the issue. Petitioner cites Exhibit 1057, but all that stands for is the general premise that doing a Boolean AND search in a Web search engine reduces the number of search results. Ex. 1057, 27. Petitioner does not allege that True uses a Boolean AND search of the kind discussed in Exhibit 1057. Thus, the statement in Exhibit 1057 regarding reducing the number of search results is tied to a manner of performing Boolean searches, something Petitioner does not use to modify Entourage. In other words, Exhibit 1057 is of little relevance to the Entourage-True combination, and does not serve as a factual underpinning in support of Petitioner’s reasoning. Petitioner also cites to several other references that discuss Boolean-style searches, but these generic background disclosures do not explain why a person of ordinary skill in the art would have considered it obvious to use one or more features of the probabilistic-based interest level search from True in a document-finding application like Entourage. See Pet. 8–9 (string citing over a dozen references with no pinpoint citations). Accordingly, there appears to be little reason, absent hindsight, to incorporate some aspect of a text-as-proxy-for-sounds system like True into Entourage’s filter or Find feature to provide more targeted searching. Accord Ex. 2020 ¶ 120 (“Patent Owner’s declarant stating that “a [person of ordinary skill in the art] working on the problem of searching large document collections would not look to [True,] a system designed for navigating imprecise transcriptions of single audio files, as the technical approaches and constraints are entirely different”). Patent Owner argues, and we agree, that another problem with Petitioner’s combination is that True does not appear to actually provide more targeted or better searching. PO Resp. 59–60 (“True’s search capabilities are inherently imprecise”) (citing Ex. 1009, 1:18–27; Ex. 2001 ¶ 137); see also Ex. 1009, 4:31–37 (explaining that True uses a speech recognition system that calculates confidence levels based on a “% likelihood that [a word] corresponds to the portion of the digitized audio [at a given time]”); Ex. 2020 ¶ 114 (Patent Owner’s declarant stating that “the purpose of True is not to definitively locate where a search string actually appears”). Petitioner does not explain what about True would make some aspect of Entourage’s filter or Find features more targeted. Even if it was known to use Boolean AND searches, for example, Petitioner is not citing True to modify Entourage to have a Boolean search. True uses an “interest level” search instead, which is more inclusive than a Boolean AND search (it adds together hits for “queen” OR “mother,” and may return hits containing neither). Ex. 1009, 5:29–50, Fig. 2 (showing results list 22 having several results which do not indicate any of the searched-for words); see Ex. 2020 ¶ 116 (Patent Owner’s declarant analyzing True’s interest level search would also include “text [that] does not show the query word”). Petitioner does not appear to be proposing to incorporate an interest level search or a Boolean-style search into the filter or Find features, and we are not persuaded that True in fact provides more targeted searching. Even if the quality of the transcripts in True happened to be perfect (see Pet. Reply 10, arguing that “True describes searching a text file that has 100% accuracy”), the fact remains that True attempts to find text in particular time windows using an interest level search based on the probability that a word or words were spoken in a given time window, which is completely different from what Entourage is doing with its search (see Ex. 2020 ¶¶ 114–116, 121). In its Reply, Petitioner states that True teaches “an incremental search for multiple search strings entered in a search field.” Pet. Reply. 10. This is a broad generalization of what True does, made with the benefit of hindsight, but as we have just explained, True’s interest level search is different from the kinds of searches done in Entourage or even the Boolean-style web searches performed in the background references. See, e.g., Ex. 1057, 27. This means it is not a matter of taking one known teaching and simply applying it to another system. True is doing something different, and it’s not clear how True’s search would actually provide “precise, targeted search results” (Pet. Reply 3) given that True appears to suggest a less-targeted search than claimed (see, e.g., Ex. 1001, 29:62–63, claiming “identifying one or more documents included in both the first one or more documents and the second one or more documents”). See also Ex. 2001 ¶¶ 135 (Patent Owner’s declarant stating that “Entourage and True are directed to completely different purposes”), 136–138 (further analysis); Ex. 2020 ¶ 114 (stating that “the purpose of True is not to definitively locate where a search string actually appears”), ¶ 116 (stating that True returns text that does not even have the search word). True does not teach, suggest, or support Petitioner’s general premise that there is a benefit for an incremental search for multiple search strings entered in a search field or that such searches would provide precise, targeted search results. The problem with Petitioner’s analysis becomes more apparent when the Petition turns to the “string separator character” of claim 1. Notably, it is the claimed string separator character that converts a field with a single search string into a field with two search strings. See, e.g., Ex. 1098, 37:12– 41–4 (deposition of Patent Owner’s declarant) (discussing that a string separator character is what instructs the computer to break up one string of characters into separate strings of characters). Thus, one cannot discuss the string separator character apart from the limitations requiring first and second search strings in a single search field. Nevertheless, Petitioner treats the “string separator character” in isolation. See Pet. 61–62. Petitioner’s reason for modifying one or both of Entourage’s filter and/or Find feature(s) to have a string separator character is because “it was common to [use string separator characters].” Id. at 61. However, even if something was known, it does not mean it is obvious to incorporate it into one or both of these features in Entourage. KSR, 550 U.S. at 418 (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). Adding a string separator character to divide a single string into two separately searched strings changes how the software would function. See Ex. 1098, 39:22–40:8 (Patent Owner’s declarant testifying that software has to look for a string separator character in order to know multiple search strings were entered in the field). The space character in “Orson Welles,” used in the Advanced Find example in Barber, for example, is not a string separator character because one looking to exclude hits with “Orson Welles” is searching for the string “Orson Welles”—the space is another character in the name string whose inclusion serves a specific semantic purpose (delineating between a first and last name). See Ex. 2001 ¶ 151 (“there is no evidence that when a user types ‘Orson Welles’ into this Find command text box that a search is performed on ‘Orson’ and ‘Welles’ separately as opposed to searching on the full text string ‘Orson Welles.’”); Ex. 1006, 387 (discussing how exclude the specific person “Orson Welles” from the search, not to find someone having the first name “Orson” or the last name “Welles”); see also Ex. 1003 ¶ 144 (Petitioner’s declarant implicitly acknowledging that the space in “Orson Welles” is not a string separator character). Thus, the space character in “Orson Welles” does not signal to the computer to break the string up into two parts at the space and perform” slip op. at 42
Patent outcomesUS 9,633,139 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,139 - Digital Global Systems, Inc. v. Deepsig, Inc.Some claims unpatentablePTAB · Mar 6, 2026 · IPR2024-01358 · APJ William V Saindon · IPR · Final written decision
Claims 1–3, 7–11, 15–19, 23, and 24 are unpatentable as obvious; claims 4–6, 12–14, and 20–22 were not shown unpatentable because the prior art did not teach the claimed received-signal feedback and transmitter-model update.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that: Persons of ordinary skill in the art (“POSITA”) would have a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with of radio communication systems and machine learning. Additional work or research experience can substitute for less or different education, and vice-versa. Pet. 3–4 (citing Ex. 1003 ¶¶ 33–34). Patent Owner does not appear to challenge this level of skill. We use Petitioner’s definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’704 patent.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“parameters “associated with the base station.” PO Resp. 31–32. In particular, Patent Owner argues that a transmitter “implemented in a base station” is not “associated with the base station.” Id. at 31. Petitioner argues that Patent Owner offers no reason to believe that a transmitter “implemented in a base station” is not “associated with the base station.” Pet. Reply 4–5; see also id. at 3–6 (entire argument). A plain reading of a “model associated with a base station” would encompass a model that operates in a base station. We do not see anything in the ’704 specification that would indicate “associated with” has any special meaning, or has a meaning contrary to our understanding of the plain meaning. We do not see the word “associated” outside the claims, whereas we see the word “implement” throughout the specification, generally in reference to an actual use of a model (consistent with our plain reading). See, e.g., Ex. 1001, 5:35–39, 6:3–17, 10:55–11:3 (discussing “implementations” where the model or some other feature of the system is used in a particular way). Accordingly, we construe a model “implemented in a base station” to be “associated with the base station.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“scenarios” (see PO Resp. 16–21), Patent Owner argues that “Jüschke does not disclose any association of the weight or bias parameters, . . . to any deployment scenario, and . . . base station” (id. at 19). For the reasons explained in our claim construction section above, we construe “deployment scenarios” to include “inline mode” models located within a base station, according to the list of deployment scenarios set out in the ’704 patent. See Ex. 1001, 2:38–65. The in-line deployment scenario depicted in Figure 6A of the ’704 patent bears a striking resemblance to the arrangement depicted in Figure 1 of Jüschke. In both figures, the analog radio signal is fed directly into the model and then the model directly outputs the signal to the amplifier. Compare Ex. 1001, Fig. 6A, with Ex. 1005, Fig. 1. As construed, the “deployment scenarios” represent the physical configurations of the device in which the model is found, such as “in-line.” Petitioner shows by a preponderance of the evidence that Jüschke’s similar in-line configuration is a “deployment scenario” as claimed because it teaches an inline model for a cellular system transmitter (i.e., base station). Pet. 26–29 (citing, e.g., Ex. 1005, Fig. 1, ¶¶ 6, 59; Ex. 1003 ¶¶ 146–147); see also Ex. 1001, 2:37–41 (stating that “[t]he particular deployment scenario[] may be . . . sending a radio transmission from a cellular base station that includes the . . . model . . . in an inline mode”).” slip op. at 26
- BurdenNot shown unpatentable
“Based on our claim construction analysis of claim 4, above, we agree with Patent Owner that claim 4 requires an actually transmitted signal and an update of the transmitter’s model. This claim construction eliminates Petitioner’s position regarding Holt teaching a modeled signal. See, e.g., Pet. Reply 17–23. We then turn to Petitioner’s argument that Holt teaches updating a model using an actually transmitted signal. See Pet. 59–60. There, Petitioner relies on a disclosure in Holt of an “actual communication channel 302 used to train the channel model 208.” Ex. 1006, 18:1–2. This is depicted in Figure 6 of Holt, in connection with a “fourth loss function” which is used to “train the decoder model.” Id. at 18:42–48; see generally id. at 17:58–18:51 (describing Figure 6). Whether training the channel model or the decoder model, Holt here does not disclose using the actual communication channel to train the encoder, i.e., transmitter. In sum, we find that Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “obtaining a received radio signal,” and even if it did, Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “updating the value of the model parameters” in the manner required by claim 4. Claims 12 and 20 are nearly identical to claim 4, and Petitioner’s ground fails for similar reasons. See Pet. 76. Claims 5, 6, 13, 14, 21 and 22 depend from claims 4, 12, and 20, and Petitioner’s ground fails for similar reasons as those claims. See id. at 77–80.” slip op. at 31
Patent outcomesUS 11,018,704 mixedClaim construction§ 103 obviousnessPatents in suitUS 11,018,704 - Cisco Systems, Inc. v. Lionra Technologies LimitedAll claims unpatentablePTAB · Mar 4, 2026 · IPR2024-01281 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5–10, 12–15, and 17–21 are unpatentable as obvious over Cornett, Paatela, and Nelson; claim 8 is also unpatentable with Russell.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“been motivated to combine the teachings of Cornett, Paatela, Nelson, and Russell in the way Petitioner proposes and would have had a reasonable expectation of success. See supra §§ III.E.2(a)–(b). Hence, Petitioner has shown by a preponderance of the evidence that claim 8 is unpatentable under § 103(a) because the claim would have been obvious over Cornett, Paatela, Nelson, and Russell.” slip op. at 122
- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 13
Patent outcomesUS 7,738,471 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,738,471 - Nxtgen Toys, LLC v. Zipstring, LLCAll claims unpatentablePTAB · Feb 20, 2026 · IPR2024-01213 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–4, 12, and 15–17 are unpatentable; substitute claim 27 is allowed, while substitute claims 21–26 and 28 are denied as obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “was typically a person with a bachelor’s degree in mechanical engineering, aerospace engineering, physics, or other science or 6 Patent Owner does not rely on any objective indicia of nonobviousness in this proceeding. engineering based degree that [was] familiar with general principles of mechanics and aerodynamics with at least two years of experience in product design and development in the field of toys or other amusement type devices.” Pet. 32 (citing Ex. 1002 ¶¶ 2–6, 22–26). Patent Owner states that it submitted the following proposal for a POSITA in the related district court litigation: “[a POSITA] would have had at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Aerospace Engineering, Industrial Design, Product Design, or similar field, with at least two years industry experience in one of these fields, and such POSITA would have been familiar with general principles of mechanics, fluid mechanics and aerodynamics.” PO Resp. 4–5. We note that the parties’ proposals overlap considerably, and neither party argues the inadequacy of the other party’s proposal or that any patentability issue in this case turns on the resolution of this issue. We find Petitioner’s definition consistent with the problems and solutions disclosed in the ’774 patent and prior art of record, and adopt it as our own. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We would arrive at the same findings and conclusions in this Decision if we adopted Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See 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)). Petitioner contends that no “term requires construction to resolve the invalidity grounds presented in this Petition since the prior art renders claims 1–4, 12, and 15–17 unpatentable under any reasonable interpretation of the claims.” Pet. 7. Patent Owner argues that it “does not believe express claim constructions are necessary during this proceeding because the claims can readily be given their ordinary and customary meaning in the context of the patent at the time it was filed.” PO Resp. 5. Based on the parties’ positions and our view of the record, we need not expressly construe any claim limitations to resolve the issues in this Decision. To the extent that any implicit claim construction issues relate to the issues raised by the parties, we address them in the context of the parties’ patentability arguments below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“string, and that adding Scorch’s slot removes this arguably inconvenient process by allowing insertion and removal of a string without removing and reinstalling any aspects of the housing. See Pet 85–86 (citing Ex. 1002 ¶¶ 174–175; Ex. 1007, 3:30–3:53, 6:03; Ex. 1008, 3:46–4:45); Pet. Reply 18–20 (citing in part Ex. 2002 ¶ 187 (Dr. Janét’s testimony that Wagner’s removal and reinstallation of a cover “may be viewed as an inconvenient process”)). Making insertion and removal of the string easier and quicker provides a notable advantage over Wagner’s existing device. See id. Scorch itself supports this argument and the related expert testimony because it discusses insertion and removal of strings and stated that the slot allows a user to “swap them out really quick.” Ex. 1007, 3:30–53. Petitioner also persuasively argues that a POSITA would know how to add the slot while maintaining the proper operation of the device, such as allowing insertion and removal of the string and avoiding inadvertent exiting of the string from the device. See Pet. 86–87 (citing Ex. 1002 ¶¶ 175–176; Ex. 1007, 4:00–30, Ex. 1008, 2:49–52); Pet. Reply 19, 21 (citing Ex. 1002 ¶¶ 174–176). We find Petitioner’s arguments and reasoning in support of adding Scorch’s slot to Wagner’s housing straightforward and persuasive. Patent Owner’s arguments against the combination do not directly refute Petitioner’s reasoning or cast doubt on Scorch’s statement that its slot enables “quick” insertion and removal of a string—quicker than Wagner’s method that requires removal and replacement of a cover on its housing. See PO Resp. 16–22; PO Sur-reply 14–20; Ex. 2002 ¶ 187 (acknowledging inconvenience of Wagner’s existing process for insertion and removal of a string). Patent Owner suggests that Petitioner’s proposed combination fails to take into consideration certain drawbacks such as the risk of inadvertent string exit from the housing or slot, but Petitioner expressly addresses such concerns in the Petition. See PO Resp. 18 (stating that Scorch’s slotted funnel may allow the string to “shoot out the slot” and that Scorch addresses this by adding “a bent wire” to “prevent the string from coming out the side”); PO Sur-reply 16–17; Pet. 86–87 (arguing that Wagner’s flanges would help to trap the string in place, but if not, Scorch’s additional structures could be used to restring the string and “to further reduce the risk of a string inadvertently exiting” the device). We agree with Petitioner that a POSITA would understand how to incorporate Scorch’s slot without causing inadvertent removal of the string—using structures already present in Wagner and Scorch—and the need to add such unclaimed structurers does not teach away from the combination as Patent Owner suggests. See Pet. 86–87; PO Resp. 22. We also agree with Petitioner that a POSITA would understand how to make minor modifications, if necessary, to allow insertion and removal of the string around Wagner’s flanges. See Pet. Reply 21 (citing Ex. 1002 ¶¶ 174–176).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“refute Petitioner’s reasoning or cast doubt on Scorch’s statement that its slot enables “quick” insertion and removal of a string—quicker than Wagner’s method that requires removal and replacement of a cover on its housing. See PO Resp. 16–22; PO Sur-reply 14–20; Ex. 2002 ¶ 187 (acknowledging inconvenience of Wagner’s existing process for insertion and removal of a string). Patent Owner suggests that Petitioner’s proposed combination fails to take into consideration certain drawbacks such as the risk of inadvertent string exit from the housing or slot, but Petitioner expressly addresses such concerns in the Petition. See PO Resp. 18 (stating that Scorch’s slotted funnel may allow the string to “shoot out the slot” and that Scorch addresses this by adding “a bent wire” to “prevent the string from coming out the side”); PO Sur-reply 16–17; Pet. 86–87 (arguing that Wagner’s flanges would help to trap the string in place, but if not, Scorch’s additional structures could be used to restring the string and “to further reduce the risk of a string inadvertently exiting” the device). We agree with Petitioner that a POSITA would understand how to incorporate Scorch’s slot without causing inadvertent removal of the string—using structures already present in Wagner and Scorch—and the need to add such unclaimed structurers does not teach away from the combination as Patent Owner suggests. See Pet. 86–87; PO Resp. 22. We also agree with Petitioner that a POSITA would understand how to make minor modifications, if necessary, to allow insertion and removal of the string around Wagner’s flanges. See Pet. Reply 21 (citing Ex. 1002 ¶¶ 174–176). At best, Patent Owner’s arguments on this issue establish potential drawbacks in Petitioner’s proposed combination, but drawbacks alone do not defeat Petitioner’s obviousness rationale that includes readily apparent benefits. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine “). In addition, even if Patent Owner were correct that Wagner’s existing design works as well as Petitioner’s proposed combination, given all of the tradeoffs involved, that would not fatally undermine Petitioner’s showing. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (obviousness does not require that the proposed combination “is the preferred, or most desirable, combination”). On this record, Petitioner’s (and Scorch’s) stated advantages that are achieved when adding Scorch’s slot to Wagner’s housing adequately support Petitioner’s motivation to combine rationale.” slip op. at 26
Patent outcomesUS 11,674,774 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · NautilusPatents in suitUS 11,674,774 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAll claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01132 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–3 and 5 are anticipated by Anzai, claim 4 is obvious over Anzai and Yamazaki, and claims 1–7 are obvious over Yamazaki and Anzai.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) at the time of the invention as having “a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design” and notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 5–6 (citing Ex. 1002, Neikirk Decl., ¶ 23). Patent Owner’s expert, Dr. Bretschneider testifies that In my opinion, the field of “electronic and optoelectronic device design” is too broad. A POSITA of the ’121, had at least a Bachelors’ degree in a field of engineering or physics and at least two to three years of professional experience related to the design and manufacture of the relevant aspects of flat panel displays. Additional relevant graduate education related [sic] could reduce but not eliminate the time requirement for professional experience. While Dr. Neikirk proposes a different definition of a POSITA, the differences do not have material effect on my opinions rendered below. Regardless of which definition of a POSITA were used, my conclusions would remain the same Ex. 2005, Bretschneider Decl., ¶ 39. We agree with and will apply Petitioner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’121 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001). We note that our conclusions would be the same even if we applied Patent Owner’s slightly narrower definition of a POSITA.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find these definitions to be of some help in construing this term. We find that the common thread is that a “passivation layer” is an insulating layer that provides protection from the environment to the layers below it. See Ex. 1012, 140; Ex. 1013, 542, Ex. 1014, 798; Ex. 2010, 3; Ex. 2013, 1. We find this construction to be most consistent with the broad claim language and the disclosure in the Specification. Although “tying up dangling bonds,” may be a mechanism by which some materials provide such protection, nothing in the Specification or the extrinsic evidence provided appears to require that. Also, while chemical protection may be one kind of protection none of the evidence suggests that is the only protection that is provided. Moreover, nothing in the Specification supports reading a chemical protection requirement into the construction. Thus, we decline to adopt that portion of Patent Owner’s construction. Instead, we construe passivation layer as “an insulating layer that provides protection from the environment to the layers below it.” We need not construe the term any further to resolve the parties’ dispute over this claim language. See Realtime, 912 F.3d at 1375.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“constructions for “passivation layer” and “capping layer.” We find that Petitioner has presented sufficient evidence to show that Anzai discloses both a “passivation layer” and a “capping layer.” As we explained above, we have construed “passivation layer” to mean “an insulating layer that provides protection from the environment to the layers below it.” Petitioner has shown that “first planarization film 17” is an insulating layer. See Ex. 1002 ¶¶ 62–65. We further find that Petitioner has shown sufficiently that “first planarization film 17” is “formed over the entire surface for flattening, which will protect the semiconductor surface from the surrounding environment.” Id. ¶ 63. We have rejected Patent Owner’s contentions that the film must tie up “dangling bonds,” and instead determined that protecting the surface from the environment is sufficient. Thus, we find that Petitioner has shown by a preponderance of the evidence that Anzai discloses the “passivation layer” of claim 3. As we explained above, we have construed “capping layer” to be “an insulation layer covering (i.e., capping) an underlying layer or structure.” Here, Petitioner has shown that Anzai’s planarization film 19 meets the claimed “capping layer.” See Pet. 20. We find that Petitioner has shown that it is more likely than not that “planarization film 19” is made of insulating material. As Dr. Neikirk persuasively testifies, Anzai discloses that planarization layer 17 may be made of an organic resin for flattening the surface. EX1003, 4:20-24. While Anzai does not disclose the material for planarization layer 19, it must be made of an insulation material because in the embodiment of Fig. 3A, it is the sole layer between electrode layer 71 and cathode layer 65 forming the second capacitor. Id., 6:3–8; Fig. 3A. Moreover, Anzai discloses that the first planarization film 17 and the second planarization film 19 for the first embodiment “function as the capacitance insulating film for this configuration.” Id., 5:62–67. Ex. 1002, Neikirk Decl., ¶ 62. We find this testimony well-reasoned and entitled to substantial weight. We further agree with Dr. Neikirk that a “POSITA would further understand that the second planarization film 19 is then further disposed on the first planarization film 17 (capping the passivation layer).” Id. ¶ 63 (citing Ex. 1003, 5:3–13; Figs. 2A–B, 3A–B). Thus, we find that Petitioner has shown by a preponderance of the evidence that Anzai discloses the claimed “capping layer.” Accordingly, we find that Petitioner has shown by a preponderance of” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“motivation to combine Anzai and Yamazaki. See Pet. 25–27; Ex. 1002, Neikirk Decl., ¶¶ 78–79. First, Patent Owner argues that essentially silicon nitride is an inferior material to use for Anzai’s planarization layer 17 compared with organic resin. PO Resp. 13–15. However, “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 797, 800 (Fed. Cir. 2021) (emphasis in original). Patent Owner does not argue that silicon nitride would not work, but rather that it would be more difficult and more expensive to use. See PO Resp. 14. But “the fact that the two disclosed apparatus[es] would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter is telling on the issue of nonobviousness.” Grit Energy Solutions LLC v. Oren Techs., LLC, 957 F.3d 1309, 1323 (Fed. Cir. 2020) (quoting Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)). “Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Here, Petitioner explains that “a POSITA would have known that organic materials usually have lower dielectric constants than inorganic materials, such as SiN, and a higher dielectric constant is desirable for the insulator in a capacitor since that leads to higher capacitance per unit area.” Pet. 26 (citing Ex. 1002, Neikirk Decl., ¶ 78). Petitioner further explains that this “then allows a reduced area storage capacitance element, one of the objectives of Anzai.” Id. (citing Ex. 1003, code (57)). Patent Owner’s focus mainly on planarization (PO Sur-reply 16–17) ignores that the Anzai’s planarization layers 17 and 19 also “function as the capacitance insulating film.” Ex. 1003, 5:65–67. Thus, although there are tradeoffs, Petitioner has shown sufficiently that a POSITA would have been motivated to incorporate the teachings of Yamazaki regarding potential materials for planarization layers 17 and 19. Second, Patent Owner argues that a Petitioner has failed to provide an adequate reason to select silicon nitride from Yamazaki’s list of potential materials. We disagree. Petitioner has explained the benefits of selecting a high dielectric inorganic material. Pet. 26. Yamazaki provides only three potential options—silicon oxide, silicon nitride, and silicon oxynitride. See Ex. 1004, 11:45–50. Moreover, Dr. Neikirk testified, supported by multiple references, that using silicon nitride was well known in the prior art at the time of the invention. See Ex. 1002, Neikirk Decl., ¶ 75 (citing Ex. 1007; Ex. 1008; Ex. 1009). “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. Indeed, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. This is the case here. Petitioner has shown that a person of ordinary skill seeking to improve the capacitance of Anzai’s planarization layers 17 and 19, without increasing the size of the capacitor, would have looked at the inorganic materials identified in Yamazaki as suitable for the purpose, and it would have been would obvious to choose silicon nitride, a well-known, and predictable material for the application. Thus, we disagree with Patent Owner that Petitioner has failed to show a sufficient reason for selecting silicon nitride from Yamazaki’s list of suitable materials. Third, Patent Owner argues that Petitioner’s contentions only support” slip op. at 37
Patent outcomesUS 7,586,121 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,586,121
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.