• Google LLC v. Eyesmatch Ltd.Some claims unpatentable
  PTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14

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

    “Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11

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

    “persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23

  Patent outcomesUS 8,982,110 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentable
  PTAB · Oct 21, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand

  On remand, claims 1–4 and 8–11 were held obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s drive-roller limitation.

  RulingsRemand decision

  • RemandFwd mixedMixed

    “Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the preamble of claim 1 is disclosed by each of the slicing machines disclosed in 2006 904 Operating Manual, Lindee, and Sandberg. Thus, we need not and do not decide whether the preamble is limiting.” slip op. at 19

  Patent outcomesUS 10,639,812 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,639,812
• Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentable
  PTAB · Oct 3, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand

  Claims 1–4 and 8–11 are unpatentable as obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s recessed-diameter limitation.

  RulingsRemand decision

  • RemandOther

    “Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10

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

    “the structure and function of the 2006 904 Operating Manual’s product holder and Lindee’s grippers are similar in that they serve to grip food product and guide it to the slicing station. See, e.g., Ex. 1005, 23; Ex. 1006, 18:20–35, Fig. 7A. The two devices differ in their actuation—the 2006 904 Operating Manual uses a ball screw spindle actuator to drive the product holder along the feed path, whereas Lindee uses a timing belt 334 to drive its grippers 151 along the feed path. Ex. 1005, 273–274; Ex. 1006, 18:33–34, Fig. 7A. However, Petitioner presented evidence that “unlike ball screws, belt drives do not require periodic lubrication with grease or exhibit backlash when they change direction.” Ex. 1003 ¶ 160. In addition, Petitioner demonstrates that a POSA at the time would have understood that conveyor belts like Lindee’s can be easily cleaned. Ex. 1051 ¶¶ 50–54. Petitioner further asserted that conveyor belts are easy to maintain at low cost. Id. citing ¶¶ 55–58. We agree with Petitioner that, at least for some scenarios, including those that Petitioner specifies, a POSA would have seen that there were advantages to using Lindee’s timing belt rather than the 2006 904 Operating Manual’s ball-screw to drive food article grippers. Petitioner has demonstrated a POSA would have been motivated to combine Lindee’s belt-driven grippers in the 2006 904 Operating Manual’s food slicer notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 50

  Patent outcomesUS 10,639,812 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,639,812
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.Some claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00189 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–4, 7, 8, and 11–16 are unpatentable over Arrasvuori; claims 5, 6, 9, 10, and 17–20 are not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’256 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Lynch (Ex. 1003 ¶¶ 43, 44).” slip op. at 13

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

    “simultaneously communicate in real-time to the first user at the first location and the second user at the second location, an interface indicating whether the challenge has been met.” Ex. 1001, 40:64–67 (emphasis added). The claim language itself suggests that “continuously generat[ing]” an interface in “real-time” allows the interface to indicate whether a challenge “has been met,” and doing so “in real-time” suggests that updates to the interface are generated as developments occur that may affect whether the challenge “has been met.” Notably, the subject claim limitation explicitly recites “continuously” generating the interface “in real-time”; it does not recite— but easily could have if intended—“periodically” generating the interface (i.e., at predetermined time intervals independent of the occurrence of developments that may affect whether the challenge has been met).3” slip op. at 29

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Petitioner contends Arrasvuori qualifies as prior art under 35 U.S.C. §§ 102(a) and 102(e) based on its filing and publication dates. Pet. 24. Patent Owner does not contest the prior art status of Arrasvuori. Also, on this record, we have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. Thus, for purposes of this Decision, we determine that Arrasvuori qualifies as prior art under 35 U.S.C. § 102(a) because Arrasvuori’s publication date of October 11, 2007, is before the earliest possible effective filing date of the challenged claims, which is March 3, 2008, and under § 102(e) because Arrasvuori’s filing date of March 29, 2006, is before the earliest possible effective filing date of the challenged claims (March 3, 2008). Ex. 1001, codes (22), (60), (63); Ex. 1005, code (22), (43).” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Arrasvuori discloses (a) “[m]onitoring” of “users performing real- world fitness tasks” (Ex. 1005 ¶ 38), using (b) “monitoring equipment . . . integrated into . . . wireless nodes and/or other computers of users, and/or [] attached to bodies of users” (id. at ¶ 39 (emphasis added)), where (c) “[u]sers might . . . wear their wireless nodes and/or other computers” (id. (emphasis added)), and where (d) “[t]he phrase[] ‘computer’ . . . refer[s] but [is] not limited to . . . a computerized watch” (id. at ¶ 90 (emphasis added); see id. at ¶ 40 (disclosing that “employed monitoring equipment might include one or more sensors”)). We find that these descriptions in Arrasvuori provide an anticipatory disclosure, particularly to the skilled artisan, of the limitation “wirelessly-connected sensor worn on an appendage of a first user.” See Ex. 1017 ¶ 45; Ex. 2006, 84:10-85:22. Although Arrasvuori does not recite in a single sentence the substance of disclosures (a) through (d) above, such as explicitly stating that its “wireless node is a computerized watch,” this is not necessary for the skilled artisan to understand that Arrasvuori discloses such a feature. See In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). Moreover, as argued by Petitioner, Arrasvuori’s disclosure of sensors “attached to bodies of users” and of users “wear[ing]” sensors itself discloses the subject limitation as broadly recited, even without considering the additional disclosure of a computerized watch. See Pet. Reply 17 (“Arrasvuori teaches wrist-worn sensors by stating that its users can ‘wear their wireless nodes and/or other computers.’” (citing Ex. 1005 ¶39)).” slip op. at 21

  Patent outcomesUS 9,278,256 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,278,256
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. SWM International, LLCSome claims unpatentable
  PTAB · Feb 5, 2024 · IPR2022-01372 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 3, 7, 24–26, 29, 30, and 34–36 are unpatentable as anticipated by Yonghong and Hardesty; claims 4 and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science in mechanical or electrical engineering and 2–5 years of experience designing perforating gun systems.” Pet. 25. According to Petitioner, “[t]he individual should be familiar with prior art methods of using gravity to orient the shaped charges in a rotatable charge tube.” Id. Petitioner further contends that “[p]ersons with different degrees may also have ordinary skill in the art, and increased education or experience could compensate for shortcomings in other areas.” Id. (citing Ex. 1003 ¶ 51). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 7–8. We apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the Specification of the ’762 Patent and the asserted prior art.” slip op. at 8

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

    “In the Institution Decision, we agreed with Patent Owner’s proposed construction for the term “collar.” Inst. Dec. 10. Because Patent Owner’s proposed construction is undisputed and supported by the ’762 Patent’s description of “outer collar 24” as having “annular side wall 62” (Ex. 1001, 7:59–63, Fig. 3), we construe a “collar” as “an annular or ring-shaped structure.”” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded by Petitioner’s contention that Yonghong discloses a “collar,” as recited in the claims. Petitioner identifies Yonghong’s bushing 4 as the recited “collar.” Pet. 30–31. As discussed below, the evidence shows that bushing 4 is annular or ring-shaped, as set forth in our claim construction.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “expert, Dr. Rodgers, who provided a 3-D CAD (three-dimensional computer aided design) model based on Yonghong’s disclosure. Ex. 1003 ¶ 38. Dr. Rodgers’ 3-D CAD model shows an annular or ring-shaped structure corresponding to Yonghong’s bushing 4. Id. At his deposition, Dr. Rodgers explained that Yonghong Figure 1 shows some parts as “half model cuts,” other parts as “a quarter cut-away,” and still other parts in “full circumference,” i.e., “[t]hey’re not cut at all.” Ex. 2008, 37:11–20. The gun carrier is shown as a half cut, and the bushing 4 is shown as a quarter-cut. Id. at 57:24–58:11, 65:3–12. Referring to bushing 4 in Yonghong Figure 1, Dr. Rodgers explained that “[a] person of ordinary skill looks at that and understands it’s a quarter-cut model, and that’s one continuous part, a ring that wraps around the bearing.” Id. at 65:13–22; see also 60:17–24 (“A bushing or a collar slides around the outside of the bearing, or another way to say it is the bearing fits within that bushing or collar to mount it in the carrier.”). According to Dr. Rodgers, there is no need for the text of Yonghong to include this description “because a person of ordinary skill looks at this v[e]ry standard drawing and understands what it is.” Id. at 60:25–61:2.” slip op. at 15

  Patent outcomesUS 11,078,762 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,078,762
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00913 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 20, and 21 are unpatentable as anticipated by Heller; the evidence does not establish claims 4–6, 8, or 23–26 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Expert testimonyMotion to exclude, deniedDenied

    “In opposition, Patent Owner first argues, and we agree, that Petitioner failed to timely object to Dr. Laura’s declaration with sufficient particularity. MTE Opp. 1–3 (citing 37 C.F.R. § 42.64(b)(1)). Our Rule requires that an “objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 37 C.F.R. § 42.64(b)(1)). Petitioner’s objection to Dr. Baura’s testimony identifies hundreds of paragraphs from her declaration followed by an objection stating her “testimony is based on insufficient facts or data, is not the product of reliable principles and methods, and does not reliably apply the appropriate principles and methods to the fact of the case.” Paper 25, 2. Petitioner’s boilerplate objection is woefully insufficient to show that Petitioner objected with sufficiently particularity to allow correction in the form of supplemental information, as our Rule requires. We further agree with Patent Owner that Petitioner’s arguments in the MTE are no more than a “transparent attempt to . . . circumvent the word-count limits of its merits briefing by injecting merits arguments in its evidentiary motion.” MTE Opp. 9. In short, Petitioner’s arguments go to the weight to be afforded Dr. Baura’s testimony, not to its admissibility, and are, therefore, an improper basis for seeking the exclusion of hundreds of paragraphs Dr. Baura’s declaration. Accordingly, Petitioner’s MTE is denied.” slip op. at 63

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. Resp. 9. Dr. Baura, in support of Patent Owner, states that she applied Petitioner’s “definition of the level of ordinary skill in the art, because,” in her opinion, Petitioner’s “and Dr. Smith’s conclusions are incorrect even under this definition.” Ex. 2010 ¶ 29. Thus, Dr. Baura neither adopts as proper nor refutes Petitioner’s proposed level of ordinary skill. We find that the ’213 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and the ’213 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17

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

    “In view of the issues we address below, including how the claimed subject matter is alleged to have been taught or disclosed in the prior art, we determine that it is not otherwise necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that Petitioner’s anticipation argument is insufficiently supported by Heller or the other evidence Petitioner relies upon. Petitioner directs us to no evidence in Heller expressly addressing a predictive relationship between in vitro and in vivo sensitivity, much less any disclosure in Heller of a particular relationship. Instead, Petitioner seeks to stretch a thin disclosure in Heller that “calibration data may simply be factory-determined calibration measurements” to necessarily mean “prior sensitivity information is derived at least in part from a predictive relationship between an in vitro sensor sensitivity to glucose and an in vivo sensor sensitivity to glucose,” as required by claim 23. Pet. 36; Ex. 1005, 77:14–15. Notably, Dr. Smith does not identify any “predictive relationship” disclosed by Heller. Ex. 1002 ¶¶ 148–149. We give little weight to Dr. Smith’s conclusory assertion that a person of ordinary skill in the art would have simply “recognized” Heller’s “factory determined calibration measurements” were necessarily “derived at least in part from a predictive relationship between an in vitro and an in vivo sensor sensitivity to glucose,” particularly where Heller does not expressly preclude in vitro measurements from its “factory determined calibration measurements.” See id. Further, in reply, Petitioner argues again that “(1) Heller discloses that calibration data can ‘simply be factory determined calibration measurements’ . . . and (2) a [person of ordinary skill in the art] would have recognized that this ‘discloses that factory (in vitro) determined sensitivity adequately predicts in vivo sensitivity.’” Reply 6. From Heller’s disclosure preponderance of the evidence that Heller expressly teaches any predictive relationship, even one in which in vitro and in vivo sensitivity are the same. that calibration data can “simply be factory determined calibration measurements,” Petitioner provides no more than speculation to suggest that there necessarily must be some relationship between in vitro measurements and in vivo measurements. See Reply 6–8. Because Petitioner has not shown by a preponderance of the evidence that Heller discloses all of the limitations of clam 23, we determine Petitioner has not shown that Heller anticipates claim 23.” slip op. at 31

  Patent outcomesUS 11,000,213 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213
• Abbott Diabetes Care Inc v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 1, 2023 · IPR2022-00909 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–4, 19, and 23 are unpatentable as obvious; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “including a “predictive glucose value,” nowhere do we find the written description or drawings to have delineated such a second function expressly as “the present invention.” See, generally, Ex. 1001; see also Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022) (“We have repeatedly held that ‘it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.’”) (citation omitted). And, regardless of the exact wording, the concern we have is that without a persuasive, express, indication in the specification that the “second function” is specifically limited to “predicting glucose values,” it is a disfavored path to read limitations into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import limitations into a claim that are not expressly part of may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The facts and written description here appear to fall more squarely into the category of cases where it is not enough to simply point to embodiments in the specification including the unrecited claim limitation. See Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (Even in cases where a “present invention” statement is provided, the Federal Circuit has explained that ‘[w]hile clear language characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, . . . such language must be read in context of the entire specification and the prosecution history.”) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41.” slip op. at 35

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

    “second function.” PO Resp. 19. However, neither did Patent Owner provide an express construction. See generally id. is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41. slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision we determined, in accordance with Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’215 patent [w]ould have had a Bachelor’s degree in biomedical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, including at least some experience in researching, developing, designing and/or evaluating (or supervising the same) methods, systems, or algorithms for providing indicators (e.g., alerts, alarms or other indicators) of analyte levels to users, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Inst. Dec. 8; Pet. 9–10 (citing Ex. 1002 ¶¶ 24–26). Patent Owner states that “DexCom does not challenge Petitioner’s POSA definition (Petition, 9-10) because the Petition fails even if it is adopted.” PO Resp. 9 (citing Ex. 2008 ¶¶ 20–23). ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’215 patent and the asserted prior art, we continue to rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11

  Patent outcomesUS 10,702,215 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,702,215
• Trend Micro Inc. v. Cupp Computing AsSome claims unpatentable
  PTAB · Apr 14, 2023 · IPR2019-00561 · APJ Thomas L Giannetti · IPR · Remand

  On remand, claim 16 was held unpatentable as obvious over APA and Sikdar; claim 7 was not shown unpatentable over Sikdar and Wright.

  RulingsRemand decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner contended “[a] person of ordinary skill in the art at the time of the alleged invention of the ’272 patent (i.e., May 30, 2007) . . . would have had a Bachelors’ degree in computer science, electrical engineering, or a comparable field of study, plus at least two years of professional experience with computer security systems and networks, or the equivalent.” Pet. 8 (citing Jakobsson Decl. ¶ 49). In our Final Written Decision, we adopted Petitioner’s description of the person of ordinary skill over an alternative formulation by Patent Owner’s expert, Dr. Medvidovic. FWD 17. However, we decided that we would reach the same result even under Dr. Medvidovic’s alternative formulation. Id. The level of ordinary skill adopted by us has not been further disputed by the parties, nor is it discussed in the Federal Circuit’s Decision. We therefore apply the same formulation for the reasons given in our Final Written Decision.” slip op. at 15

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

    “Patent Owner asserts that in Petitioner’s analysis of claim 16, “Petitioner reads out any distinctions between ‘at least a subset’ and ‘a subset.’” PO Resp. 45. Petitioner responds that “[t]he Board should reject Patent Owner’s argument that ‘the subset’ must be a ‘proper subset,’ i.e., a set that is less than the full set of outgoing data.” Pet. Reply 5. Petitioner cites dictionary definitions and other additional authorities to support this conclusion. Pet. Reply 5–6 (citing, e.g., Exs. 1022, 1023, 1024). For example, A Dictionary of Computing defines “subset” as “[a] set T whose members are all members of S,” and contrasts this with a “proper subset.” Ex. 1023, 3. Petitioner further points out that the antecedent basis of “at least a subset” for “the subset” in claim 16 supports its construction. Pet. Reply 6. In our Final Written Decision, after considering Petitioner’s evidence and the language of the claim, we found that the references to “subset” in claim 16 should be construed broadly enough to read on providing any portion of the outgoing data, up to and including all the data, and not a proper subset. FWD 24–25. For the reasons summarized above and those given in our Final Written Decision, we find that the term “subset” in claim 16 does not limit the claim to a “proper subset,” i.e., the claimed subset may include all the members of the set.” slip op. at 16

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

    “Applying the Federal Circuit’s “flexible” standard, we find that for the reasons given that Petitioner demonstrates a motivation to combine Sikdar and the APA, as proposed by Petitioner, with a reasonable expectation of success. We disagree with Patent Owner’s arguments and find that a person of ordinary skill would have been motivated to add Sikdar’s NAT/PAT capability to the prior art network system of Figure 18, disclosing a software-based firewall. Pet. 55–58; Pet. Reply 23–25. As Petitioner points out, Sikdar’s RSP “does not include any NICs . . . , which are a separate hardware component.” Pet. Reply 24. We agree with Petitioner that Patent Owner’s argument is not convincing. More importantly, however, Patent Owner’s argument fails because in Ground 3, Petitioner does not propose combining “any device containing two NICs with the APA.” Id. Petitioner proposes combining “the RSP’s NAT/PAT functionality with the APA.” Id. at 24–25 (citing Pet. 55–58) (emphasis added). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “non-obviousness, including long-felt need, failure of others, and skepticism by experts in the industry. PO Resp. 50–52. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Before reaching a decision on obviousness of claim 16, we must weigh these secondary considerations. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). We concluded, in our Final Written Decision, that Patent Owner had failed to meet its burden. FWD 47–50. We agreed with Petitioner that Patent Owner had failed to establish the required nexus to its claims. Id. at 49. We agreed also that Patent Owner had not provided convincing evidence supporting the existence of such objective indicia. Id. We find that, for the reasons given in our Final Written Decision, which we adopt for this Final Written Decision on Remand, Patent Owner’s evidence of secondary factors is insubstantial and unconvincing, and we therefore give it minimal weight in considering the obviousness of the challenged claims.” slip op. at 40

  Patent outcomesUS 8,365,272 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,272
• Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentable
  PTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand

  Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.

  RulingsRemand decision

  • RemandOther

    “rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12

  • ExcludeMotion to exclude, deniedMixed

    “We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18

  Patent outcomesUS 9,352,229 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,352,229
• Forescout Technologies, Inc. v. Fortinet, Inc.Some claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 15, and 16 are unpatentable as obvious over Mahaffey; the other challenged claims were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal on the level of ordinary skill.” slip op. at 7

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

    “We find that the specification, therefore, supports Patent Owner’s argument that the term “web content filtering” differs from “web filtering”” slip op. at 10

  • BurdenDecided for patent owner

    “particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring IPR petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)) (emphasis added). This burden does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an IPR). By not providing a claim construction for a key term, “web content filtering,” Petitioner failed to live up to its obligation to provide an understandable explanation of the element-by-element specifics of the unpatentability challenges, including the particular portions of prior art supporting those challenges. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)– (4); Harmonic Inc., 815 F.3d at 1363–64; Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intel. Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)); see also MModal LLC v. Nuance Communicatons, Inc., 846 Fed. Appx. 900, 906 (Fed. Cir. 2021) (non-precedential).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by these belated arguments, as they are based entirely on testimony by Dr. Cole as to what a person of ordinary skill “would understand” that is unsupported by any citations to Syvanne or other evidence of record. Such unsupported opinions are not entitled to any weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Consolidated Trial Practice Guide 35 (November 2019)8 (“The Board has broad discretion to assign weight to be accorded expert testimony. . . . However, the testimony must be based on sufficient facts and data.”); Fed. R. Evid. 702(b). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications. In other words, 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. substitute for disclosure in a prior art reference itself.” Consolidated Practice Guide at 36.” slip op. at 26

  Patent outcomesUS 9,894,034 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,894,034

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.