- Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · Nov 26, 2025 · IPR2024-00984 · APJ Nabeel U Khan · IPR · Final written decision
Claims 6 and 7 are unpatentable as obvious over Meulen and Chao; claim 1 was not shown unpatentable because Meulen does not disclose transforming an image captured by its camera.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art in the relevant field “would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras,” or alternatively “would have four years of experience working on image or video processing, or digital cameras.” Pet. 6. Petitioner further argues that an “advanced graduate degree” may “make up for the work experience.” Id. (citing Ex. 1002 ¶¶ 33–34). “Patent Owner applies Petitioner’s proposed level of skill.” PO Resp. 4–5 (citing Ex. 2027 ¶¶ 19–20). We adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’413 patent and the cited prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“From the outset we note that the words of the claim recite “non- uniformly shift[ing] the pixels” and do not recite a “non-linear” transformation. This favors Petitioner’s position, which is based directly off the definition of “non-uniform,” over Patent Owner’s position, which substitutes “non-linear” for “non-uniform.” Generally, then, we would determine the ordinary and customary meaning of the claim term in the context of the entire Specification. Here, however, the ʼ413 patent does not mention “uniform” or “non-uniform” shifting of pixels anywhere except in the claims. The Specification, therefore, provides limited guidance, by itself, as to the ordinary and customary meaning of the term. Nonetheless, even reviewing the portions of the Specification cited by the parties, we see no clear or unambiguous effort to limit the challenged claims to require only non-linear transformations in which the pixels to which a transformation is applied do not have the same amount of shift. is not non-linear. Pet. Reply 1. Specifically, Petitioner argues that the center circle of Figure 2B maintains the original circular shape after the transformation is applied to the image which contradicts Patent Owner’s argument that no two pixels will have the same amount of shift. Pet. Reply 1–2. We agree. In Figure 2B of the ʼ413 patent, the center of the image is chosen to be the region of interest. Ex. 1001, 4:19–21. After the input image goes through linear scaling (step 204) and then non-linear warping (step 206) the circles become more vertically compressed as they approach the top and bottom edges and more horizontally stretched as they approach the left and right edges. Id. at 4:22–30. But “the center circle is fully corrected so that it maintains the original circular shape of the corresponding circle in the input image 212.” Id. at 4:23–25. This means that at least some pixels, such as those of the center circle, undergo the same amount of shift after being transformed.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“readable instructions” of claims 1 and 2 must occur in a particular order. Specifically, Patent Owner argues that the step of “determine a portion within the input image” must occur after “obtain[ing] an image” and before “apply[ing] a transformation to the input image.” PO Resp. 17 (citing Ex. 2027 ¶ 59). Petitioner argues, on the other hand, that the specification does not require such an order and, in fact, describes an embodiment where such an order is not followed. Pet. 3. We determine that the “determine a portion within the input image” step does not need to occur after the “obtain an image” step and before the “apply a transformation to the input image” step. As Patent Owner itself points out, claims 1 and 2 are apparatus and system claims respectively, and an ordering of the limitations of such claims is not necessary. PO Resp. 17. Even if we were to treat the apparatus and system claims as reciting the steps of a method, “as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). We see nothing in the claims that would cause us to break this general rule. Patent Owner argues that the claims imply a “specific order because the ‘determine a portion’ requirement operates on ‘the [obtained] input image’ and defines the ‘portion’ that is necessary for the 23; Ex. 2027 ¶ 59). Although the steps are recited in a specific order in the claim, as they necessarily must be, the claim does not expressly specify that the certain steps must occur before or after other instructions, nor does logic imply such a requirement. For example, if certain characteristics of the image are known before the image is obtained (e.g. the size, dimensions, resolution, aspect ratio, or content etc.) the determination of the portion of the image could be made before the image is obtained. These characteristics may be based on the specific device taking the image or the subject matter of the image, both of which may be known before the image is captured or obtained. It is, therefore, not necessary that the image be obtained in order for a portion of the image to be determined. Similarly, we do not find the written description to expressly or implicitly specify an order the claimed step of “determine a portion of the input image.” For example, the written description of the ʼ413 patent states that in Figure 2B “the center of the image is chosen to be the region of interest that is most fully corrected and the distortion increases in each direction as the frame boundary is approached.” Ex. 1001, 4:19–22. Patent Owner emphasizes that this disclosure implies that an input image is obtained before the center portion is chosen. PO Resp. 19 (citing Ex. 1001, 3:63–64, 4:19–22). But the description of this embodiment does not expressly recite an order. For example, the description of Figure 2A explains that “an input image is obtained” in step 202, “the image is then scaled” in step 204, and a “non-linear warping is then applied” in step 206. Ex. 1001, 3:63–4:3. This description does not mention “determin[ing] of a portion of the image” as a separate step or as part of the listed steps, and therefore, does not specify an order in which this step must occur. is configured so that some areas of the image are fully corrected geometrically, while some other areas are distorted. . . . [T]he center of the image is chosen to be the region of interest that is most fully corrected and the distortion increases in each direction.” Id. at 4:17–19. This excerpt from the ʼ413 patent, which the Patent Owner specifically relies on (PO Resp. 19), also does not specify an order in which the determination step (choosing of the region of interest) takes place. Moreover, because the ʼ413 patent states that the warp module is configured so that some areas are fully corrected while others are not, the determination step could take place at the time the warp module was configured, presumably before the image was obtained. Finally, the ʼ413 patent states that “in the case, of video, the area may dynamically change between images (e.g. to follow a moving object).” Ex. 1001, 4:34–36. Patent Owner argues that this description “requires first obtaining the image in order to locate the object that is being followed.” PO Resp. 19–20. This embodiment is related to the case of video or a moving object, which the challenged claims do not mention. We, therefore, decline to limit the scope of the claim based on this embodiment. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Having reviewed the parties’ arguments and cited evidence we determine Petitioner has established, by a preponderance of the evidence, that a POSITA would have been motivated to combine Meulen and Chao. For example, Petitioner argues that “[i]t would have been obvious that when performing image scaling, pixels from the input to output positions are shifted based on a scaling factor.” Pet. 91. Meulen teaches scaling but does not provide the details regarding scaling. E.g., Ex. 1007, 1:55–56, 4:37–49. We agree that in light of Meulen’s disclosure of scaling, a POSITA would have looked to other references, such as Chao, for further details on how to perform scaling. Dr. Katsaggelos provides credible support, testifying that “Meulen mentions ‘compression and/or scaling,’ and provides details on how to perform compression. But Meulen does not disclose the details of how to perform scaling. A POSITA when faced with Meulen and having the knowledge about scaling would have been motivated to turn to a prior art reference that discloses the details of scaling.” Ex. 1002 ¶ 262. Patent Owner argues that Petitioner provides no motivation to combine other than asserting that it involves combining prior art elements. PO Resp. 35 (quoting Pet. 92). As explained above, however, Petitioner does more than just assert that the motivation involves combining prior art elements. Instead, Petitioner explains that Meulen discusses both compression and scaling, and provides details regarding compression but does not provide details on how to scale. Pet. 91–92; Ex. 1002 ¶¶ 262–262. Thus, Meulen teaches that scaling was a known technique. See Hybritech, (“a patent need not teach, and preferably omits, what is well known in the art”). Dr. Katsaggelos testifies that, in this situation, a POSITA would have looked to Chao for details regarding scaling. Ex. 1002 ¶¶ 262–263. We determine this establishes, by a preponderance of the evidence, that a POSITA would have had reason to combine Meulen’s teachings with Chao. Patent Owner draws a distinction between Meulen and Chao, arguing that “Meulen is concerned with modifying content from a media source to be displayed on a device’s screen while Chao, by contrast, is directed to changing the aspect ratio of a document intended for printing.” Id. at 36 (citing Ex. 2027 ¶¶ 89–90). Patent Owner’s argument is contradicted, however, by Chao’s disclosure which states that “after all the background and foreground elements in the image have been resized . . . [t]he image may be output by displaying the image on or as part of: a display screen such as a computer monitor, camera screen, printer screen, printed page, projected image, or the like.” Ex. 1008 ¶ 32. Patent Owner argues that Meulen’s system avoids distortion near the middle where the user’s focus is more likely to be, while Chao, on the other hand, is directed to avoiding distortion of stylized borders on differently sized pages. PO Resp. 36–37 (citing Ex. 1006, 1:26–29; Ex. 1008 ¶¶ 1, 25; Ex. 2027 ¶¶ 91–92). This argument reads the prior art too narrowly and does not address Petitioner’s combination. Petitioner does not rely on Chao for its teaching of avoiding distortion near the borders of the image, but rather on its teaching of scaling the image while maintaining the design intent of the original image. Ex. 1008 ¶ 22; Ex. 1014 ¶ 67. Thus, Petitioner is applying Chao’s techniques of scaling (regardless of where the area of 92. Finally, Patent Owner argues that Chao’s approach of stretching/shrinking only the background and uniformly scaling entire foreground objects is suitable for graphic design but incompatible with Meulen which is concerned with adapting externally derived media source content for display on a fixed size screen. PO Resp. 37–38 (citing Ex. 2027 ¶ 93). We disagree with Patent Owner’s argument because it does not address Petitioner’s combination. Petitioner relies on Chao’s teaching of stretching/shrinking of background elements and applies that stretching/shrinking to Meulen’s images displayed on its screen. Pet. 91–92 (citing Ex. 1008 ¶¶ 28, 63; Ex. 1002 ¶ 263). The fact that Chao applies its teaching to graphic design does not prevent a POSITA from applying those teachings to Meulen’s media content displayed on its screen.” slip op. at 20
Patent outcomesUS 10,015,413 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,015,413 - Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.Some claims unpatentablePTAB · Nov 3, 2025 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Remand
On remand, claims 1–3 and 8–12 are unpatentable over the instituted grounds; claim 4 was not shown unpatentable.
RulingsRemand decision- RemandOther
“Federal Circuit (Paper 33), which vacated the original Final Written Decision and remanded the proceeding to the Board. See ReCor Med., Inc. v. Medtronic Ir. Mfg. Unlimited Co., No. 2023-2251, 2025 WL 944511 (Fed. Cir. Mar. 27, 2025) (“the Appeal Decision” or “Appeal Dec.”); see also Paper 41 (copy of the Appeal Decision). The Federal Circuit’s mandate issued on May 5, 2025. See Paper 40. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, on the complete record, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of claims 1–3 and 8–12 of the challenged patent, and we conclude that Petitioner has not proven, by a preponderance of the evidence, the unpatentability of claim 4.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentable
“and Petitioner’s rebuttal evidence. Objective evidence of nonobviousness, when present, must be considered as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that one or more of the challenged claims would not have been obvious to one of ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“1. Claims 1–3 and 8–11 Because the obviousness ground based on Levin and Acker is dispositive as to challenged claims 1–3 and 8–11, we need not reach this additional ground as to those claims. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018) (holding that a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Sci. Scimed, analysis in the appeal to the Federal Circuit. See Appeal Dec. *1–*2 (summarizing grounds at issue on appeal and not discussing anticipation based on Acker). Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (nonprecedential) (stating that the “Board need not address issues that are not necessary to the resolution of the proceeding,” such as “alternative arguments with respect to claims [the Board] found unpatentable on other grounds”); SK Hynix Inc. v. Netlist, Inc., IPR2017-00692, Paper 25 at 40 (PTAB July 5, 2018) (determining all challenged claims to be unpatentable and not addressing additional grounds). 2. Dependent Claim 4 As to dependent claim 4, in the context of this ground, Petitioner relies on Acker as to the additional limitations in claim 4 in the same manner as relied on in the context of the ground based on Levin and Acker. See Pet. 73 (“The combination teaches this element for the same reasons described in [the obviousness ground based on Levin and Acker], claim 4, with the exception that [one of ordinary skill in the art] would have been motivated based on his or her knowledge of prior renal denervation work, as noted above.”). Thus, for the same reasons discussed above (see § II.C.3.c), we determine, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that claim 4 would have been obvious based on Acker and the knowledge of one of ordinary skill in the art. G. Asserted Obviousness of Claim 12 Based on Acker, the Knowledge of a Person of Ordinary Skill in the Art, and Yock Petitioner asserts that claim 12, which depends from independent claim 1, would have been obvious based on Acker, the knowledge of one of ordinary skill in the art, and Yock. Pet. 12, 75; Pet. Reply 35–36. Patent Owner provides arguments addressing this ground. PO Resp. 57–60; PO” slip op. at 75
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Independent Claim 1 Petitioner contends that Acker discloses each limitation of claim 1. Pet. 61–63; Pet. Reply 35. In the “Overview of the Ground” section, Petitioner references its proposed construction of the phrase “configured to” and states that “it is proper to consider whether the prior art is ‘capable of’ performing the recited functions, as opposed to requiring that a designer of a prior art device have actually conceived of the recited functional language.” Pet. 61. Petitioner continues: “If the PTAB agrees that this is the proper approach to claim construction, then Acker also anticipates the claims challenged in this ground.” Id. For the reasons below, we determine, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is anticipated by Acker. As to element 1d, which includes the phrase “configured to,”16 Petitioner states that Acker is capable of being used to target renal neural fibers outside of the blood vessel to thermally induce modulation of target neural fibers while protecting non-target tissue in the blood vessel wall from thermal injury for the reasons discussed under claim 1, limitation [1d] and in the section entitled “Reasonable Expectation of Success”, beginning on page 37 [of the Petition]. Pet. 62–63 (citing Daft Pet. Decl. ¶ 179) (first bracketed text added by Petitioner). Patent Owner argues that, in the context of this asserted ground based” slip op. at 71
Patent outcomesUS 8,845,629 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,845,629 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCSome claims unpatentablePTAB · Feb 4, 2025 · IPR2023-01345 · APJ William V Saindon · IPR · Final written decision
Claims 1–4, 7–11, and 14–20 were shown unpatentable over White or Nussbaum; claims 5, 6, 12, and 13 were not shown unpatentable over White or Nussbaum with Shakkarwar.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are not inclined to adopt Patent Owner’s proposal to require a specific number of years (or a fully bounded range) in the definition of the level of ordinary skill in the art. First, Patent Owner has not offered any legal authority supporting or explaining its position. Second, using the term “at least [X] years” is common practice and generally understood to be an approximation regarding the minimum level of skill of a hypothetical person—in other words, no precision can truly be expected of the specific number of years in this context. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person.”). The point of the exercise is to provide context for a holistic obviousness analysis. See id. (setting out “various factors” used to analyze the level of ordinary skill); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984) (the hypothetical person is an “an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability”). We are not persuaded of a need for strict precision in the number of years of experience of a hypothetical person used in our analysis in this case. Third, Patent Owner asks for no particular relief based upon its argument. That is, even if we agreed to remove “at least,” Patent Owner does not argue that the outcome of the Decision would be any different.1 1 For example, setting the level of skill to exactly two years of experience would not serve to automatically disqualify an expert having ten years. Kyocera Senco Ind’l Tools v. Int’l Trade Com’n, 22 F.4th 1369, 1377 (Fed. Cir. 2022) (requiring that “a witness must at least have ordinary skill in the art” and stating that “it would be improper to require an expert witness to possess ordinary skill in the art and nothing more”). In conclusion, we apply Petitioner’s proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’588 patent and the cited prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The description of “mapping” in the ’588 patent makes clear to us that it is an association of an input value from a set of input values to a corresponding output value from a set of output values. Id. at 2:44–46 (describing “the mapping table that associates non-core domain operating frequencies and corresponding interconnect operating frequencies”) (emphases added). The “association” described here in the ’588 patent is not merely describing the fact that both exist, but that knowing the value of the first causes you to know the value of the second. This is also how it is described in the claims, wherein the “mapping” is “of selectable frequencies of the graphics processing circuitry to selectable frequencies of the interconnect.” Id. at 8:63–65 (emphasis added). Or more generally, the claim recites a mapping of a frequency to a frequency. In sum, although we agree with the parties that “mapping” should be given its plain and ordinary meaning in light of the specification, we note that the parties appear to dispute whether the prior art teaches the claimed “mapping” based on differing understandings of the plain and ordinary meaning. Based on our analysis above, we determine that a person of ordinary skill in the art reviewing the ’588 patent would understand that the “mapping” limitation requires (1) frequencies mapped to frequencies and (2) that a mapping is an association of one value to a corresponding value such that knowing the graphics frequency means that you know the corresponding interconnect frequency. Further, given that the corresponding frequencies are “selectable,” we understand that to mean that there is a set of possible frequencies that are defined from which to select. Ex. 2001, 21:19–22:2. With this understanding, we can turn to the dispute over whether the prior art teaches the limitations set forth in claims 5 and 12, as no other terms require construction at this time. Realtime, 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 12
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Given this disclosure, we agree with the testimony of Patent Owner’s expert that Shakkarwar’s empirical calculation, by looking up the frequencies of various devices and summing them up, is not the claimed mapping of frequencies to frequencies. Ex. 2002 ¶ 44 (citing Ex. 1006, 6:8– 16, 6:49–7:17). That is, rather than teaching the use of the graphics device frequency get a corresponding interconnect frequency, Shakkarwar calculates the interconnect frequency by adding up the frequencies of all of the devices using the interconnect. Ex. 1006, 6:63–7:30; Ex. 2002 ¶ 44 (“Considerations of the hardware are addressed through empirical calculation, by knowing the requested data bandwidth of each device.”). Based on the above, we find that Shakkarwar’s table does not map a set of frequencies to a set of frequencies, and we find that the alleged mapping in Shakkarwar is not what is required by the claim because knowing the non-core device frequency in Shakkarwar is insufficient to know the required interconnect frequency. Thus, we credit the testimony of Patent Owner’s expert that Shakkarwar does not teach the claimed mapping. Ex. 2002 ¶¶ 42–45. On the other hand, the testimony of Petitioner’s expert is conclusory on this point, and fails to grapple with these differences between the claims and prior art. Ex. 1003 ¶ 140. Thus, we credit the testimony of Patent Owner’s expert over Petitioner’s expert as to the teachings of Shakkarwar.” slip op. at 16
- BurdenMixed
“that Petitioner has not shown sufficiently that Shakkarwar teaches the claimed mapping limitation, for the following reasons. The lookup table in Shakkarwar has a list of clock speeds (frequencies) for specific devices. Ex. 1006, 7:7–10. These clock speeds represent the bandwidth needs of each individual device. Id. at 7:10–13. By looking up the bandwidth needs of each individual device in use, the system can determine the total bandwidth need. Id. at 7:5–17. For example, if one device requires 20 Megabits of data and the second device requires 10 Megabits of data, then the data rate (bandwidth) required will be 30 Megabits of data. Id. at 7:13–17. If the required bandwidth is different from the current bandwidth, then the current bandwidth must be modified. Id. at 7:18–26. Given this disclosure, we agree with the testimony of Patent Owner’s expert that Shakkarwar’s empirical calculation, by looking up the frequencies of various devices and summing them up, is not the claimed mapping of frequencies to frequencies. Ex. 2002 ¶ 44 (citing Ex. 1006, 6:8– 16, 6:49–7:17). That is, rather than teaching the use of the graphics device frequency get a corresponding interconnect frequency, Shakkarwar calculates the interconnect frequency by adding up the frequencies of all of the devices using the interconnect. Ex. 1006, 6:63–7:30; Ex. 2002 ¶ 44 (“Considerations of the hardware are addressed through empirical calculation, by knowing the requested data bandwidth of each device.”). Based on the above, we find that Shakkarwar’s table does not map a set of frequencies to a set of frequencies, and we find that the alleged mapping in Shakkarwar is not what is required by the claim because knowing the non-core device frequency in Shakkarwar is insufficient to know the required interconnect frequency. Thus, we credit the testimony of Patent Owner’s expert that Shakkarwar does not teach the claimed mapping. Ex. 2002 ¶¶ 42–45. On the other hand, the testimony of Petitioner’s expert is conclusory on this point, and fails to grapple with these differences between the claims and prior art. Ex. 1003 ¶ 140. Thus, we credit the testimony of Patent Owner’s expert over Petitioner’s expert as to the teachings of Shakkarwar.” slip op. at 15
Patent outcomesUS 10,705,588 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,705,588 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCSome claims unpatentablePTAB · Feb 4, 2025 · IPR2023-01335 · APJ William V Saindon · IPR · Final written decision
Claims 1–5, 7, and 13 are unpatentable over Conroy and Finkelstein or Conroy; claims 14–18 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are not inclined to adopt Patent Owner’s proposal to require a specific number of years (or a fully bounded range) in the definition of the level of ordinary skill in the art. First, Patent Owner has not offered any legal authority supporting or justifying its position. Second, using the term “at least [X] years” is common practice and generally understood to be an approximation regarding the minimum level of skill of a hypothetical person—in other words, no precision can truly be expected of the specific number of years in this context. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person.”). The point of the exercise is to provide context for a holistic obviousness analysis. See id. (setting out “various factors” used to analyze the level of ordinary skill); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984) (the hypothetical person is an “an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability”). We are not persuaded of a need for strict precision in the number of years of experience of a hypothetical person used in our analysis in this case. Third, Patent Owner asks for no particular relief based upon its argument. That is, even if we agreed to remove “at least,” Patent Owner does not argue that the outcome of the Decision would be any different.1 In conclusion, we apply Petitioner’s proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’833 patent and the cited prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Pet. 10. Patent Owner provides a construction for the term “independent” of claim 1. PO Resp. 12–18. For context, claim 1 requires first and second domains, wherein “each of the first and second domains [] operate at an independent voltage and frequency.” Patent Owner provides its analysis and concludes that claim 1 requires that the voltage and frequency of the first and second domains to be “controlled separately from one another.” PO Resp. 14, 15. We disagree with Patent Owner’s conclusion. In particular, we note that Patent Owner is attempting to add a “control” limitation to the claim. The claim does not require independent control of the first and second domains, it requires them “to operate at an independent voltage and frequency.” That is, by the plain language of the claims, what is independent is the voltage and frequency of the first domain compared to the voltage and frequency of the second domain. Patent Owner identifies many passages in the ’833 patent specification allegedly supporting its position, but we do not find any of these passages persuades us to agree with Patent Owner’s position. See PO Resp. 12–14 (citing Ex. 1001, 1:13–17, 1:63–66, 7:59–62, 8:27–31, 8:38– 46, 10:4–8). These passages mostly state that the domains are independent, which we understand to mean “separate” in this context. Ex. 1001, 1:63–66, 7:59–62, 8:27–31, 8:38–46, 10:4–8; accord PO Resp. 14 (summarizing these citations and concluding that “the term ‘independent’ is used in its ordinary sense to mean ‘separate.’”); Ex. 2002 ¶ 33 (same). One passage is similar to the claim language, and recites that a core can be “of an independent power domain and can be configured to operate at an independent voltage and/or frequency.” Id. at 8:27–31. We see nothing in these passages that would require independent control as opposed to “operate at an independent voltage and frequency” as claimed. Instead, in the one passage that is similar to the claim language, it is clear that what is “independent” is the “voltage and/or frequency.” Id. at 8:27–31. Patent Owner then cites to another batch of passages from the ’833 patent and concludes that “a person of ordinary skill in the art would recognize that the ’833 patent is describing a situation in which voltages and/or frequencies of the different domains are controlled separately from one another.” PO Resp. 14–15 (citing Ex. 1001, 1:56–60, 1:63–66, 2:22–25, 2:32–36, 5:9–12, 5:21, 5:27–44, 7:20–24, 8:38–42, Fig. 1; Ex. 2002 ¶ 33). Most of these passages describe the domains being allocated portions of a power budget. See Ex. 1001, 1:56–60, 2:22–25, 5:28–40, 7:20–24, 8:38–42. One passage is similar to the prior batch of citations, stating that the domains themselves are independent. Id. at 1:63–66. Other passages describe a power control unit doing the allocation, and refers to this as “control.” Id. at 2:32–36, 5:27–26, 5:21, 5:40–44. Last cited by Patent Owner is Figure 1, which has a box labeled “Control First and Second Domains Frequency and Voltage.” Id., Fig. 1 (item 130). Reviewing the cited passages and the figure, we find that the power control unit allocates or controls power. However, the claim is not directed to the power control unit and it does not use the word “control.” The claim requires the first and second domains to have independent voltages and frequencies, and we fail to see any support in the specification to add an additional requirement for independent control of the first and second domains. In view of the above, we are not persuaded by Patent Owner’s” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“claim 13, it is the domain that is allocated the power budget (as opposed to the domain’s individual cores). See Ex. 1001, 12:57–59 (“allocate a variable power budget between the . . . domains”), 1:56–66 (explaining domains— “the term ‘domain’ is used to mean a collection of hardware and/or logic that operates at the same voltage and frequency point”). We agree with Patent Owner and credit its expert that Nussbaum is concerned with the power settings of each individual core, GPU, or other computational unit. Ex. 2003 ¶ 63. Even if, in one passage, Nussbaum talks about power reallocation in “computational units, such as the CPU or [GPU],” in context it is clear that the allocations remain on the individual, e.g., core, level. Ex. 1007 ¶¶ 19– 20, 21 (Table 1), 23 (Table 2), 24. First, in the sentence just cited, Nussbaum disparages treating units homogenously, i.e., adjusting them in groups or domains (as required by claim 13). Id. ¶ 19. Then, Nussbaum praises distributing power “among the active cores or other computational units,” i.e., on an individual or core level. Id. In this phrase, Nussbaum is not using “computational units” as a word meaning “CPU,” because Nussbaum already directly references the “cores” in the phrase. Id. Nussbaum later discusses figuring out how each core reacts to power changes, in order to determine which cores can better exploit additional power. Id. ¶¶ 25–28. For these reasons, we credit the testimony of Patent Owner’s expert that Nussbaum does not disclose allocating power to a plurality of cores as a single domain (Ex. 2002 ¶ 63), which is consistent with the above-noted disclosures of Nussbaum.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“not address these passages of the Petition. See generally PO Resp. 57–59, Sur-reply 17–18. Instead, Patent Owner challenges a separate, general rationale that Petitioner made at the beginning of its ground. See Pet. 69. Rationales that are broad and general may be persuasive. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (“[R]ationale[s] [are] not inherently suspect merely because [they’re] generic in the sense of having broad applicability or appeal. Quite the opposite.”). We need not evaluate Petitioner’s general rationale here, however, because we find Petitioner’s unrebutted, specific rationale arguments about providing a user interface to edit or revise the power sharing values to be persuasive. See Pet. 77–78 (citing, e.g., Ex. 1029 ¶ 236). In particular, we agree with Petitioner that providing a user interface to allow a user to edit the power tables, as taught in Finkelstein, would have been a routine and obvious modification to Conroy. As Petitioner’s expert points out, even beyond the teachings of Finkelstein, it was known in the art to allow users control over power allocation. Ex. 1029 ¶ 236 (citing Ex. 1026, 11:13–27 (describing a “user preferences database” containing “parameters and procedures for how to apportion power among various devices”); Ex. 1028 ¶ 17 (“The [power allocation] preference might be determined . . . based on a selection by a user of the system (e.g., via a graphical interface).”)). Thus, Petitioner’s proposed combination is an example of using a known feature to provide a known benefit. The known feature is a user interface, and the known benefit is allowing the user to indicate their preferences through the interface. See Ex. 1029 ¶ 236; KSR, 550 U.S. at 417 (“[A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”). Based on the record before us, we determine that Petitioner has established a reason with rational underpinnings for combining the user level control interface of Finkelstein with the power management system of Conroy.” slip op. at 33
Patent outcomesUS 8,775,833 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,775,833 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCAll claims unpatentablePTAB · Jul 9, 2024 · IPR2023-00407 · APJ Robert J Silverman · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Stanziale ’771; the Board did not reach the alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As an initial matter, the recited expression “mounted to” is broad. The Federal Circuit has explained that words in a claim “will ordinarily be given their full meaning,” without imposing narrowing modifications on the claim language. Johnson Worldwide, 175 F.3d at 989, see also Virginia Panel, 133 F.3d at 865–66. As to whether the “mounted to” connection may be an indirect connection, the parties agree that an indirect connection is permitted — a view that is amply supported by the intrinsic record, as discussed above. With regard to the types of movement that may occur between a “string guide” and a corresponding “limb,” the intrinsic record shows that that various types of movements (including no movement at all) are characterized as “mounted to.” Slight variations of “mounted to,” occurring in the intrinsic record, are helpful in understanding the claim language — particularly because the ’015 patent itself uses such a variant (“mounted . . . on”) to describe the very connection (between a “string guide” and a “limb”) that is elsewhere, and in claim 1, is described as “mounted to.” See Ex. 1001, 5:23–26.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’ sole argument — i.e., that Stanziale ’771 fails to teach the “mounted to” limitation — is based upon its construction of the “mounted to” limitation, which permits the “string guide” to be rotatable relative the corresponding “limb,” but permits no other type of relative motion. See PO Resp. 4, 13–14. As discussed above, we do not accept Patent Owner’s construction of the “mounted to” limitation. In Stanziale ’771, first and second pulleys 145, 146, and interconnecting pivot 147 (all three of which Petitioner maps to claim 1’s “string guide[s]”) are pivotally connected to a number of intermediate members (e.g., lever arms or pushing arms 32, connecting elements 27, and constraining member 29) which are, in turn, pivotally connected to elastic members 10 (which Petitioner maps to claim 1’s “limb[s]”). See Pet. 41–42 (citing Ex. 1012 7:9–17, 8:26–8:13, 11:8–9, 14:18–15:22, 16:24–25, 16:29, 17:2, 17:15–17, 17:24–27, 19:12–30, 20:32–21:16, Figs. 1–7; Ex. 1016 ¶¶ 177–179); see also Ex. 1012 11:3–7, 11:34–12:4, 12:10–17, 16:29–18:3, 18:22–19:30, Figs. 8, 9, 10a, 10b. Therefore, Stanziale ’771, in Petitioner’s mapping, teaches the “string guide[s]” connected indirectly to the “limb[s].” Per the construction of the “mounted to” limitation employed herein (“connected to, either directly or indirectly”), Petitioner establishes, by a preponderance of the evidence, that Stanziale ’771 teaches the “string guide[s]” “mounted to” the “limb[s],” as recited in claim 1 of the ’015 patent. Contrary to Patent Owner’s concerns (see Paper 47, 1), the indirect connection between Stanziale ’771’s “string guide[s]” and “limb[s]” is not “unbounded.” Rather, the connection disclosed by Stanziale ’771 is the type of indirect connection supported by the intrinsic record. See supra § II.B. Patent Owner’s contention that “a POSA would be disinclined to rely on [Stanziale ’771] as a reference for the improved crossbow design disclosed in Claim 1” is not persuasive. See PO Resp. 38 (citing Ex. 2029 ¶ 46). The test for anticipation is whether a prior art reference discloses each and every element recited in the claim, not whether one of ordinary skill in the art would have been inclined to rely on the reference. See Net MoneyIN, Inc., 545 F.3d at 1369.” slip op. at 32
- ExcludeMotion to exclude, deniedMixed
“Motions to exclude evidence are authorized under 35 C.F.R. § 42.64. Rule 42.64(b)(1) states: “Once a trial has been instituted, any objection [to evidence] must be filed within five business days of service of evidence to which the objection is directed.” Further, “[t]he objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 35 C.F.R. § 42.64(b)(1). “A motion to exclude evidence must be filed to preserve any objection.” 35 C.F.R. § 42.64(c).” slip op. at 40
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the present proceeding, Petitioner proposed — and Patent Owner does not dispute (see PO Resp. 3) — the following definition of a person of ordinary skill in the art: A hypothetical POSA to which the ’015 Patent pertains would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows. (Ex. 1016 ¶17.) Such a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows. (Id.) Pet. 28. As discussed above, we adopt Petitioner’s description of a person of ordinary skill for the purposes of this Decision. See supra § II.A. Petitioner alleges various deficiencies in Mr. Teater’s background, education, and knowledge. Paper 39, 4–8. Nevertheless, Mr. Teater satisfies the definition, of a person of ordinary skill in the art, that Petitioner advanced. Specifically, Mr. Teater has reviewed crossbows for 14 years, encompassing the relevant priority date for the ’015 patent, during which time he wrote evaluations of various bows and crossbows, developed and published testing standards for crossbows, and served on the Archery Trade Association’s technical committee for standards and guidelines. Paper 41, 4 (citing Ex. 2029 ¶¶ 3, 4, 7). Accordingly, Mr. Teater satisfies Petitioner’s definition of “a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows.” Pet. 28. Petitioner emphasizes that Mr. Teater “does not have a degree in mechanical engineering.” Paper 39, 4 (citing Ex. 2034, 1; Ex. 1034, 43:20–44:5). However, no degree of any kind is mandatory for satisfying Petitioner’s definition of a person of ordinary skill in the art. Indeed, Petitioner’s definition states that “[s]uch a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (emphasis added). There is no dispute that Mr. Teater meets this standard. Petitioner raises various other issues that form no part of the definition that Petitioner advanced — for example, whether Mr. Teater has taught courses related to crossbows, whether he is named as an inventor on a” slip op. at 36
Patent outcomesUS 9,354,015 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,354,015 - Apple Inc. v. Logantree, LPAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00040 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 are unpatentable, principally as obvious over the grounds decided.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.13 PO Resp. 18. In addition, the parties’ proposed definitions are substantially similar. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“any weight. Reply 29–30. First, Petitioner contends that the Patent Owner Response does not provide a single citation to Dr. Madisetti’s declaration, Exhibit 2005. Id. at 29. However, Patent Owner explains that the Patent Owner Response mistakenly cites to Exhibit 2001 instead of Exhibit 2005 due to a filing error and confirms that Dr. Madisetti’s declaration is persuasive. Petitioner also argues that Dr. Madisetti’s testimony in Exhibit 2005 is not based on underlying facts because, in the 60-paragraph declaration, only paragraphs 32–35 and 59 have any citations. Reply 29. Petitioner also asserts that Dr. Madisetti refused to answer questions and provide clarification during his deposition. Id. at 30 (citing Ex. 1040, 30:3–20, 52:2–14, 78:16–84:4). Patent Owner states that it served a supplemental declaration in response to Petitioner’s Objection to Evidence months before the deposition of Dr. Madisetti.14 Sur-reply 20. On this record, we decline to discount Dr. Madisetti’s testimony in its entirety as suggested by Petitioner. Instead, we consider Dr. Madisetti’s testimony, as we do all expert testimony, in accordance with governing law and Board rules. E. Ground 1: Asserted Obviousness Based on Allum, Raymond, and Conlan” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree with Petitioner. Allum’s and Conlan’s design schemes, although different, are not mutually exclusive. Indeed, in addition to the pushbuttons, Conlan’s monitor includes a movement senor for detecting a full range of a subject’s movement and a memory in which data obtained by the monitor can be stored and later retrieved for evaluation. Ex. 1010, 2:60–63, 3:56–58, 4:47–49. As such, Conlan combines the pushbuttons for a user to tell the device about the user’s condition with a movement senor and a memory that enables the device to tell the user (or another person) about the user’s conditions (i.e., the user’s movements). Furthermore, even if Conlan did not disclose using two design schemes together, the differences in the design schemes identified by Patent Owner would not prevent one of ordinary skill in the art from considering combining the references. Rather, as Petitioner asserts, adding Conlan’s pushbuttons would allow the resulting device to gather additional data relating to a particular event, such as a feeling of dizziness, that pertains to the subject’s balance or movement. See Pet. 21–22 (citing Ex. 1010, 6:38–46; Ex. 1003 ¶¶ 78–79); see also id. at 34 (arguing that “switches 22, ‘dizziness,’ and, when depressed, the switches 22, 23 ‘cause that occurrence to be recorded in the internal memory of the monitor’”). We are persuaded that one of ordinary skill in the art would recognize such additional data to be beneficial to Allum’s diagnostic and rehabilitative tool for people prone to abnormal falling and wishing to improve movement control.” slip op. at 18
Patent outcomesUS 6,059,576 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,059,576 - Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2022-00092 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8
- BurdenMixed
“We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18.” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentablePTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28
Patent outcomesUS 7,353,555 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,353,555
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.