- Medivis, Inc. v. Novarad Corp.Some claims unpatentablePTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand
Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.
RulingsRemand decision- RemandOther
“Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22
Patent outcomesUS 11,004,271 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,004,271 - Magic Leap, Inc. v. Percept Technologies Inc.All claims unpatentablePTAB · Mar 11, 2026 · IPR2023-00495 · APJ Kristen L Droesch · IPR · Remand
Claims 1–3 and 12–14 are unpatentable as obvious over Osterhout and, separately, over Mann ’526 and Vaissie.
RulingsRemand decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“March 15, 2013 filing date, a person of ordinary skill in the art (“POSITA”) would have had a B.S. degree and a Masters degree in Computer Science, Computer Engineering, Electrical Engineering, Physics, or an equivalent field, as well as one to two years of academic or industry experience in wearable electronic devices or comparable industry experience. Pet. 8–9 (citing Ex. 1003 ¶ 21). Although the level of skill in the art was addressed in the Preliminary Response and the Decision on Institution (see Prelim. Resp. 27–30; Dec. on Inst. 6–10), Patent Owner does not address Petitioner’s definition of the level of ordinary skill in the art. See PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’113 Patent Specification and the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For all of the foregoing reasons, we decline to adopt Patent Owner’s proposed ordinary and customary meaning for “a dynamic eye tracking mechanism in communication with the lens” because it is not supported by the claim language or the ’113 Patent Specification, and is supported only by unsworn attorney argument.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“below, we agree with Petitioner. We find that Osterhout teaches the dynamic eye tracking mechanism is in optical communication with the lens, consistent with its ordinary and customary meaning, because in Osterhout the user’s eye receives optical communication in the form of light transmitted from the translucent lens, and the camera of the dynamic tracking mechanism, in turn, receives optical communication in the form of light from the user’s eye. See Ex. 1005 ¶¶ 164, 304.” slip op. at 20
Patent outcomesUS 8,696,113 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,696,113 - Valve Corporation v. Immersion CorporationAll claims unpatentablePTAB · Jun 12, 2025 · IPR2024-00477 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–7 are unpatentable as anticipated by and obvious over Komata; the Board did not reach the Tsuji or Rosenberg grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that a POSITA would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user. . . . Also, a person could have qualified as a [POSITA] with more formal education and less practical or industry experience, or vice versa. PO Resp. 17–18 (citing Ex. 2008 ¶ 17). Although these level of skill definitions are not the same, the differences are minor, and Patent Owner does not argue that its level of skill definition is dispositive. To the contrary, Patent Owner asserts that “[i]n any event, the challenged claims of the ’260 Patent are patentable under either . . . definition.” Id. at 18. We apply Petitioner’s level of skill but would have reached the same result had we applied Patent Owner’s.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“As we explained in our Institution Decision, we disagreed then, and still disagree, “that the second pressure must be detected after the first pressure is detected (or that the third pressure must be detected after the first pressure is detected) simply because the second pressure is greater than the first pressure (and the third pressure is greater than the second pressure).” Dec. 27. As we explained there, “[t]he claimed relative magnitudes of the first, second, and third pressures do not define any temporal relationships regarding the detection of the pressures.” Id. We agree with Petitioner that claim 1 recites quantitative relationships for the pressures, not temporal relationships. Reply 4. For example, claim 1 requires “the second pressure greater than the first pressure” but says nothing about when the second pressure must be greater than the first pressure. A key misconception undergirding Patent Owner’s argument is its statement that “a ‘first pressure’ must first exist before the invention can detect that the ‘second pressure’ is greater.” PO Resp. 27 (emphasis added). The claim does not require detecting that the second pressure is greater than the first pressure. Limitation [1c] simply says, “detect a second pressure on the first input device, the second pressure greater than the first pressure.” In other words, all the detection that this limitation requires is detecting a second pressure. The claim then observes that the second pressure is greater than the first pressure but does not require detecting this. Limitation [1e] similarly detects pressure but not the comparison: “detect a third pressure on the first input device, the third pressure greater than the second pressure.” Thus, it does not follow that “a ‘first pressure’ must first exist before the invention can detect that the ‘second pressure’ is greater.” See id. Accordingly, we determine that Patent Owner’s analysis of the claim language is unpersuasive.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Our decision here does not depend on the meaning of this term. Patent Owner only argues the phrase “tactile sensation” for Petitioner’s challenge over Rosenberg, which we do not reach because Petitioner’s challenge over Komata is dispositive. See PO Resp. 63–66. Accordingly, we do not construe this term.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“that Komata discloses all the limitations of claim 1. Patent Owner does not dispute that Komata discloses all the limitations of claim 1. Instead, Patent Owner disputes that Komata discloses the order of all the steps of claim 1, based on its construction requiring the steps to be performed in order. PO Resp. 50–54; Reply 17 (observing that Patent Owner “does not dispute that Ground 1 demonstrates how Komata anticipates or renders obvious claims 1–7 if [Patent Owner’s] ordered-steps argument is rejected”); Sur-reply 12–14 (not disputing the Reply’s observation). As Patent Owner’s argument relies on a claim construction we have not adopted, Patent Owner fails to undermine Petitioner’s persuasive showing.7 To the extent, as we note above, that the claims may require a partial ordering (i.e., limitation [1a] preceding limitation [1b] and limitation [1c] preceding limitation [1d], see supra Section I.A.1.a), Petitioner has persuasively shown that Komata discloses such ordering. a. Summary as to Claim 1 For the above reasons, Petitioner has shown by a preponderance of the evidence that claim 1 is anticipated by and would have been obvious over Komata. 3. Dependent Claims 2–7 Petitioner also contends that claims 2–7 would have been obvious over Komata. Pet. 28–35. Patent Owner does not dispute these dependent claims. Petitioner provides detailed explanations indicating where Komata teaches or suggests the limitations of claims 2–7, supported by Mr. Ward’s testimony. Id. We determine that Petitioner has shown by a preponderance of the evidence that claims 2–7 are anticipated by and would have been obvious over Komata.” slip op. at 17
Patent outcomesUS 7,336,260 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,336,260 - Valve Corporation v. Immersion CorporationAll claims unpatentablePTAB · Jun 12, 2025 · IPR2024-00478 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–19 are unpatentable because Petitioner proved that Rosenberg I anticipates them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“feedback that simulates a mechanical detent.” PO Resp. 28; Sur-reply 3. Petitioner “does not explicitly disagree” that a virtual detent is “vibrotactile feedback that simulates a mechanical detent.” Reply 2. Petitioner asserts that “[i]f there is a dispute, it is whether Rosenberg I’s vibrotactile feedback ‘simulates a mechanical detent’ because [Patent Owner] says such simulation requires a sense of mechanical resistance and Rosenberg I allegedly lacks such simulated resistance.” Id. (citing PO Resp. 58–59).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“To the extent Patent Owner urges us to require virtual detents to vary on a system or application basis, we do not find this interpretation required by the claims or specification either. Although the claims refer to “a plurality of systems,” they do not recite different detent profiles for each of those systems. Claim 1, for example, recites “receiving a detent profile associated with one of the systems.” The other claims are similar. Patent Owner’s reliance on non-limiting specification language is also unavailing. E.g., Ex. 1001, 8:38–46 (“can” and “may”), 4:30–44 (“embodiment” and “may”).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“supports its proposed construction. See PO Resp. 32. Patent Owner argues that claim 15 recites a “system comprising” “an input device configured to control one of a plurality of systems,” and hence “the recited plurality of systems are subsystems in addition to the containing system.” Id. We question how this point supports Patent Owner’s proposal because this does not address why each system must “provide[] context for virtual detents.” But regardless, we find it unpersuasive because claim 15’s preamble is not limiting (merely reciting “A system comprising”). See Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015) (“[P]reamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim.”); see also Tr. 80:4– 8 (Patent Owner conceding that the preamble is non-limiting). Nor is there any explicit language in claim 15 that would exclude any particular system, such as the system recited in the preamble, from the recited “plurality of systems.”” slip op. at 9
Patent outcomesUS 9,430,042 unpatentableClaim construction§ 102 anticipationPatents in suitUS 9,430,042 - Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · May 20, 2025 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–13 and 16 are unpatentable as obvious under § 103(a) over the stated Fells-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent, and . . . two to three years of industry or research experience,” and “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “does not disagree with Petitioner’s definition of the level of ordinary skill in the art,” but “does not believe that resolution of the Petition depends on the precise definition of the level of ordinary skill.” PO Resp. 12. Petitioner’s proposed articulation is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’184 patent. See Ex. 1001, 1:15–2:53. As it is uncontested, we adopt it for this decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties agree that the terms of the contested claims should be given their ordinary and customary meaning, but neither party argues that we should construe any claim terms explicitly. Pet. 6 (citing Ex. 1003 ¶¶ 62– 63); PO Resp. 12. We agree with the parties that, for this decision, we do not need to construe any of the terms explicitly. 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))). However, the meaning of certain terms are contested, including most notably “magnetic field sensor,” and we discuss those terms below in the context of the prior art.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“Petitioner argues that, to the extent the preamble is limiting, Fells discloses the recited wireless energy transfer system, and that the system includes facilities to detect FOD. Pet. 8–9 (citing Ex. 1005 ¶ 191, Fig. 2; Ex. 1003 ¶¶ 66–71, 96–101). Patent Owner does not specifically contest Petitioner’s arguments. See PO Resp. We agree with Petitioner’s argument that Fells discloses the preamble; thus, we need not decide whether the preamble is limiting. See Ex. 1005 ¶ 191, Fig. 2.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s argument that the ordinary and customary meaning of “magnetic field sensor” refers to a device that measures only external magnetic fields. There is nothing in the claim language to suggest such a limitation: the plain language simply refers to a “magnetic field sensor,” without regard to how the sensor works or where it senses magnetic fields from. Ex. 1001, 12:16. In fact, the claim does not explicitly require sensing anything at all using the magnetic field sensor, merely reciting a “foreign object debris detection system” comprising the sensor and that the “foreign object debris detection system is configured to verify” the presence of FOD. The very general nature of how the magnetic field sensor is recited, without any explicit recitation of how its output may be used, undermines Patent Owner’s overly restrictive interpretation. Although the ’184 patent specification includes examples of measuring external magnetic fields to detect FOD, Patent Owner has not pointed to anything in the specification indicating an intent to restrict the term “magnetic field sensor” to only those sensors that measure external magnetic fields. Nor is there intrinsic evidence that an “eddy-current sensor” would not also be a magnetic field sensor, given that it senses magnetic fields. Indeed, as Petitioner persuasively argues, an eddy-current sensor still measures external magnetic fields—albeit magnetic fields generated within FOD through interaction with a powered sensor. Pet. 6–7; Ex. 1037 ¶¶ 14– 16, 25–29.” slip op. at 17
Patent outcomesUS 10,027,184 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,027,184 - Inductev, Inc. v. Witricity CorporationSome claims unpatentablePTAB · May 16, 2025 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 7–10, 12–16, 18, and 19 are unpatentable over the stated grounds; claims 4–6 were not shown unpatentable because the proposed multi-coil alignment lacked prior-art support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent and . . . two to three years of industry or research experience in the field of wireless energy transfer,” and that “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner does not contest this. See PO Resp. Petitioner’s proposed articulation is supported by testimonial evidence and appears to be consistent with the types of problems and solutions in the ’654 patent. See Ex. 1001, 1:15–28. We adopt it for this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Petitioner that the evidence does not suggest (and Patent Owner does not explicitly argue) that the terms “transmitting antenna” and “receiving” antenna depart from the ordinary and customary meanings of those terms. Pet. 1–2. However, for the reasons discussed below, the outcome of our decision would be the same whether we adopted Petitioner’s or Patent Owner’s proposed construction. Thus, we need not adopt either party’s proposed construction for this decision. 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 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner
“spaced configuration are not confined to ferrite cores 32 and 3, and that at least a component of the flux lines will escape the cores. See Ex. 1032 ¶¶ 48–52; Ex. 1038 ¶ 54 Fig. 2. Indeed, the evidence suggests (and Dr. Horenstein acknowledges in his first declaration) that at least a component of flux will escape the core of even a traditional transformer. See Ex. 1032 ¶¶ 45–47; Ex. 1044, 6; Ex. 2001 ¶ 27. In his second declaration, Dr. Horenstein provides contrary testimony that in Odachi’s open configuration during alignment, cores 32 and 3 “act to confine or guide the magnetic flux lines, rather than radiate them into free space,” and “the flux lines would [not] leave the gap area and enter into the space distal to the magnetic circuit.” Ex. 2010 ¶ 69. But in view of Dr. Horenstein’s contrary position in his first declaration, and the lack of supporting evidence in his second, we do not find it credible. 37 C.F.R. § 42.65(a) (2022) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Apple Inc. v. MPH Techs. Oy, 28 F.4th 254 (Fed. Cir. 2022).” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(4) Analysis We are persuaded by Petitioner’s argument that during the alignment process in Odachi corresponding to claim 13, there is a “spaced distance between the primary inductive coupler [230] and the secondary inductive receptacle 2” which is “reduced gradually and electromagnetic induction occurs between the coupler to the receptacle when the former coupler comes close to the latter receptacle.” Ex. 1005, 6:1–6. Thus, prior to any contact or precise alignment between the two cores, “an electromotive force is induced in the secondary coil 4 and this induced force is increased with the decrease in the spaced distance.” Id. at 6:6–8. At least in that spaced configuration, the evidence of record suggests that primary coil 31 produces a near-field component of flux into free space (the air space between the coils where there is no intervening core material) that is intercepted by secondary coil 4 to effect resonant inductive coupling, and that secondary coil 4 intercepts and receives the near-field component of flux in free space that is generated by primary coil 31 to effect resonant inductive coupling. See Ex. 1032 ¶¶ 48–52, 55. Thus, we find that Odachi discloses a “transmitting antenna” (coil 31) and a “receiving antenna” (coil 4) under Patent Owner’s proposed construction. We would reach the same finding under Petitioner’s proposed broader construction because the evidence suggests that Odachi’s coils 31 and 4 would have been considered “antennas” under the parties’ uncontested definition of that term, which is “a device that radiates and/or receives radio waves.” See id. ¶¶ 43–47, 53–54; Ex. 1032 ¶ 15 (Dr. Allen agreeing with this definition of “antenna”); Ex. 2001 ¶ 25 (Dr. Horenstein agreeing with this definition of “antenna”)). In addition, Petitioner persuasively shows that the free space between Odachi’s coils in the spaced configuration includes the “near-field region,” which includes the induction field around primary coil 31. See Ex. 2006, 498; Ex. 1045, 5:4–7; Ex. 1032 ¶¶ 53–54). Dr. Horenstein’s testimony does not contradict this. Although he points out that there are separate terms for inductive, near, and far fields, he also acknowledges that “[t]he region of space closer to the antenna than the far field is the near-field region.” Ex. 2010 ¶ 37 (citing Ex. 2006, 275).8” slip op. at 22
Patent outcomesUS 8,466,654 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654 - Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · Feb 13, 2025 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Cook and Bennett because the combination teaches the claimed wireless power system and provides reasons to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’687 patent, we apply the pre-AIA version of § 103. wireless energy transfer,” but “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 37– 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner “does not disagree with Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 9–10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. Confirm compatibility of the resonators and provide authorization for initiation of transfer of power Patent Owner proposes construing the phrase “confirm compatibility of the resonators and provide authorization for initiation of transfer of power” in independent claims 1, 7, and 13 to mean “verify that parameters of the resonators will permit power transfer and provide authorization prior to initiating the transfer of power.” PO Resp. 7. Patent Owner argues that the claim language “recit[es] two functions—confirming resonator compatibility and providing authorization,” which “indicates that confirming compatibility of the resonators must be different than providing authorization.” Id. at 7–8. Patent Owner also argues that the specification distinguishes “the confirmation of resonator compatibility” from “merely verifying that the vehicle to be charged is authorized to receive charging” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“a. Bennett’s resonant frequency tuning The evidence of record indicates that it would have been obvious to implement Cook’s wireless charging system using Bennett’s resonant frequency tuning. Ex. 1003 ¶ 114; Pet. 21–22. Specifically, Cook teaches that its wireless charging system requires “the right frequency” to charge a vehicle’s battery. Ex. 1007 ¶ 12; Pet. 24. But Cook does not teach how to adjust the resonant frequency of its wireless charging system to work with different vehicles. Ex. 1003 ¶ 114; Pet. 24. As discussed above, Bennett teaches tuning the power transmitting unit’s resonant frequency to the target electronic device’s requested resonant frequency. Ex. 1005 ¶¶ 37–38, 57– 58, Fig. 3. A person of ordinary skill in the art would have recognized that Bennett’s resonant frequency tuning would improve Cook’s wireless charger by making it compatible with different vehicles. Ex. 1003 ¶ 114; Pet. 24– 25. In addition, a person of ordinary skill in the art would have reasonably expected the combination to work because Bennett explains that its techniques apply generally to battery-powered devices. Ex. 1003 ¶ 121; Ex. 1005 ¶ 3; Pet. 28–29.” slip op. at 20
- Strike new argumentNew argument consideredDecided for petitioner
“in the Reply is an improper new argument. PO Sur-reply 15. We disagree. The Petition expressly relies on Bennett’s resonant frequency tuning as teaching the compatibility limitation. Pet. 49–50 (citing Ex. 1005 ¶¶ 37–38, 41). Patent Owner responds by arguing that Bennett’s resonant frequency tuning is an optional step that occurs after initiating power transfer. PO Resp. 23–24. In the Reply, Petitioner responds by pointing to Bennett’s Figure 3 as evidence that the resonant frequency tuning occurs before initiating power transfer. Pet. Reply 18–21 (citing Ex. 1005 ¶¶ 37, 57, Fig. 3; Ex. 1036 ¶¶ 28–29). Petitioner’s argument in the Reply properly relies on the same feature (i.e., Bennett’s resonant frequency tuning) and the same embodiment (i.e., the system shown in Figures 1 and 3) as the Petition. Ex. 1005 ¶¶ 29, 37–38, 57 (“FIG. 3 is a flowchart illustrating resonant power transfer operations performed using the power system of FIG. 1 . . . .”). Thus, Petitioner’s reliance on Bennett’s Figure 3 is a proper response to arguments in Patent Owner’s Response, not an improper new theory of unpatentability. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) ([T]he arguments and evidence in the reply must not be part of a new theory of unpatentability” and “must be responsive to the patent owner’s contentions or the Board’s institution decision.”).” slip op. at 16
Patent outcomesUS 8,912,687 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision
Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8
Patent outcomesUS 8,461,719 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,461,719 - Meta Platforms, Inc. v. Eight KHZ, LLCSome claims unpatentablePTAB · Jan 7, 2025 · IPR2023-01003 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 3, 6, 15, 16, and 19 are unpatentable; claims 2, 8–10, 12, 14, 17, and 18 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “Call” Terms (Claims 1, 8, and 15) The parties, and their respective experts, agree that “telephone call” (claim 1), “electronic call” (claim 8), and “electronic phone call” (claim 15) should be interpreted to mean “voice communication over an electronic network between at least two parties,” which was Patent Owner’s proposal in the district court case. See Pet. 16, 19 n.8, 58 (citing Ex. 1027, 9);1 Ex. 1003 ¶ 82; Ex. 2011 ¶¶ 51–53; Ex. 2016, 176:10–177:6 (Dr. Kyriakakis agreeing that “there is live voice exchange during a telephone call” (in addition to “background noise”)), 180:22–181:11 (same). Based on our review of the ’090 patent, we agree as well and adopt that interpretation for purposes of this Decision. See, e.g., Ex. 1001, col. 3, l. 1–col. 5, l. 44 (“Consider an example in which a listener sits at his kitchen table and has an electronic telephone call with his mother.”), Fig. 1. 1 When citing non-patent references, we refer to page numbers added by Petitioner in the bottom-right corner of the exhibit. Listening Person” (Claim 1) and “Sound Localization Point . . . Away From and Proximate to the First Person” (Claim 15) a) Procedural History As explained above, the parties did not propose any express interpretations in their Petition and Response. See Pet. 15; PO Resp. 3. Patent Owner argued, however, that “Petitioner and Dr. Kyriakakis misapprehend the scope and meaning of the [c]hallenged [c]laims.” PO Resp. 35–49. For example, Patent Owner argued that they “mischaracterize [c]laim 1’s scope as exclusively directed at binaural recording (but not binaural synthesis),” claim 8 “inherently us[es] binaural synthesis and HRTF processing,” and “binaural synthesis methods must be employed” for claim 15. Id. at 36, 46, 48–49 (emphasis omitted). In its Reply, Petitioner characterized the dispute between the parties as pertaining to the phrase “away from and proximate to,” where Petitioner proposed an interpretation of “a distance from” and Patent Owner allegedly was proposing “externalization of sound through HRTFs and [6 degree of freedom (6DOF)] tracking of the listener relative to the SLP that represents the talker.” Reply 2–12. Patent Owner responded in its Sur-Reply by stating that Petitioner “mischaracterizes” Patent Owner’s arguments, Petitioner “disputes constructions that [Patent Owner] never proposed,” and Petitioner’s focus on certain claim language for which Patent Owner “never proposed construction” was “misplaced.” Sur-Reply 1–2, 11. Patent Owner agreed, though, that the parties’ disagreement was “whether the claims require HRTF processing and whether [the] prior art teaches such processing.” Id. at 5; see Tr. 49:19–21 (Patent Owner agreeing that the dispute is “whether the claims require . . . processing with HRTFs”). dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner relies on its earlier arguments regarding claim 17. Pet. 41; see Ex. 1003 ¶ 184 (citing earlier analysis of Bedingfield). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to apply Ballas’s wearable frame with head tracking and HRTF processing to Bedingfield-Andrea’s headphones” to “provide[] a more realistic virtual experience,” but does not make any argument that Ballas teaches changing an ITD. Pet. 39–43; see Ex. 1003 ¶¶ 175–191. For the reasons explained above, we are not persuaded that Bedingfield teaches changing an ITD. See supra Section II.D.6. Accordingly, Petitioner has not proven, by a preponderance of the evidence, that claim 18 would have been obvious based on Bedingfield, Andrea, and Ballas under 35 U.S.C. § 103.” slip op. at 61
- Strike new argumentNew argument consideredDenied
“exceptional remedy of striking sentences in the Sur-Reply. Patent Owner filed the deposition transcripts of Dr. Welch and Dr. Roginska “only for the limited purpose of allowing the Board to understand the context of the cross-examination” and “does not rely on the[] [e]xhibits for any substantive argument in [the] Sur-Reply.” Sur-Reply v–vi. Patent Owner does not cite Exhibits 2029 and 2030 themselves in its Sur-Reply; it only cites Dr. Kyriakakis’s deposition transcript in this proceeding. Id. We agree with Patent Owner that its arguments in the Sur-Reply are properly responsive to the Reply because they address Dr. Kyriakakis’s cross-examination testimony where he was questioned about the opinions in his reply declaration (but we do not agree with Patent Owner’s claim interpretation arguments on the merits, for the reasons explained above). See Mot. to Strike Opp. 3; supra Section II.B.2.e. We also agree, under the particular factual circumstances presented, that filing Exhibits 2029 and 2030 was proper so the Board has the full context in which to evaluate Dr. Kyriakakis’s cross-examination testimony. Petitioner’s Motion to Strike is denied.” slip op. at 79
Patent outcomesUS 9,226,090 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,226,090 - Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCSome claims unpatentablePTAB · Jan 6, 2025 · IPR2023-01023 · APJ Lynne H Browne · IPR · Final written decision
Claims 1, 3–9, and 11–14 are unpatentable under §103; claims 2, 10, and 17–20 were not shown unpatentable under either asserted ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“research experience in virtual/augmented reality, including visual and audio modeling and rendering” and that “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4–5 (citing Ex. 1003 ¶¶ 32–37). “Patent Owner accepts Petitioner’s definition of [a POSITA].” PO Resp. 2. For purposes of this Decision, we also 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[t]he challenged claims are unpatentable under any reasonable construction, including their plain meaning.” Pet. 5. We understand Petitioner’s position to be that no claim construction is required. See id. Patent Owner contends “that ‘no express constructions of the claims are necessary.’” PO Resp. 2 (citing Dec. 10). We agree with the parties that no claim terms require express construction. See Vivid Techs. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“preponderance of the evidence that the combined teachings of Pedrotti, Jang, and Begault disclose or suggest “highlighting, while the user is located in the zone and with a display of the WED, one of the multiple SLPs in the zone when the PED held in the hand of the user is pointed at one of the multiple SLPs in the zone” as required by claim 1. Even if we assume (without deciding) that Pedrotti’s virtual fence is an SLP, we agree with Patent Owner that Pedrotti’s virtual fence is “at the boundary” of its “safe area” (i.e., zone), not “in the zone” as required by limitation 1[c]. PO Sur-reply 4; Ex. 1005, 11:66–12:15. In other words, the virtual fence “defines the zone itself and thus is not in the zone” as the claim requires. PO Sur-reply 4. Petitioner has not addressed this difference between what is claimed and what is disclosed by Pedrotti or explained why the combined teachings of Pedrotti, Jang, and Begault would have rendered placement of the virtual fence “in the zone” obvious to one of ordinary skill in the art. We further agree with Patent Owner that Petitioner has not adequately demonstrated that it would have been obvious for highlighting to occur in response to the user pointing a PED at the virtual fence (or any other virtual image). Rather, Petitioner repeatedly asserts that a person of ordinary skill in the art would have understood that Pedrotti’s system could have used highlighting when the PED is pointed at one of the SLPs, without pointing to sufficient basis in Pedrotti’s disclosure or explaining why one of ordinary skill in the art would have been motivated to implement highlighting in the manner claimed. Pet. 20–22. Dr. Welch similarly testifies, without sufficient support in Pedrotti, regarding what a person of ordinary skill in the art “could” have done. See, e.g., Ex. 1003 ¶¶ 268–272, 275–276. Such reasoning is inadequate to demonstrate obviousness because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)).” slip op. at 18
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also makes a number of new arguments in its Reply that a person of ordinary skill in the art “would have used Pedrotti’s system to highlight other SLPs, such as Pedrotti’s virtual ‘weapon[s],’” relying in part on “additional references.” Reply 6–10. Petitioner, however, only briefly referenced virtual sword 802 in its Petition and did not advocate the same theories for limitation 1[c] in its Petition. See Pet. 13 (mentioning a “virtual weapon” in connection with limitation 1[a]), 19–20; Tr. 53:17–55:1. Accordingly, these arguments in the Reply are improper new arguments, which we do not consider. See 37 C.F.R. § 42.23(b) (“[a] reply may only respond to arguments raised in the corresponding . . . patent owner response”); Patent Trial and Appeal Board Consolidated Trial Practice Guide at 74 (Nov. 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated) (“CTPG”) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.”); Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not err in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (concluding that the Board did not err in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)).” slip op. at 19
Patent outcomesUS 10,798,509 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,798,509
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.