- Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · Jul 31, 2024 · IPR2023-00309 · APJ John D Hamann · IPR · Final written decision
Claims 1–6 and 8–20 are unpatentable: claims 1–3, 5–6, 8–10, and 13–15 as obvious over Benjamin144 and Benjamin703; claims 4, 11–12, and 16–20 as obvious with Childers.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. In our Decision on Institution, we adopted the definition Petitioner” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Turning to the claim language, we agree with Petitioner that “proximity is measured along the trace relative to the bondpad,” and “[n]othing in the claims requires a comparison to other structures, like the heater arrays.” Pet. Reply 6. For example, claim 3 recites “wherein the 8 Deposition Transcript of Steven Dietl (Dec. 19, 2023). bondpad supplies power to the first heater array and the second heater array portions by power traces physically separated proximal to the bondpad.” Ex. 1001, 6:43–46 (emphasis added). In this context, “proximal” relates to the power traces, and where they are separated, relative to the bondpad. Id. In other words, the traces are separated nearer to the bondpad (which is the traces’ proximal end relative to the bondpad) then the end of the traces (which is the traces’ distal end relative to the bondpad). Id. This conclusion is consistent with the definitions for proximal and distal from the dictionary that Patent Owner identifies. In particular, “proximal” is defined as “situated nearer to . . . the point of attachment,” and “distal” is defined as “situated away . . . from the point of attachment.” Ex. 2001, 3; Ex. 1016, 3. Here, the point of attachment is the bondpad. Of note, the dictionary also states that proximal is “[t]he opposite of distal,” which reinforces that the distance comparison for the separation is relative to the ends of the power traces. Ex. 2001, 3. Obviously, there are two ends to the traces with one being proximal to the bondpad and the other distal thereto. And we find that consulting the dictionary definition is appropriate here under our circumstances. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Lastly, we have reviewed the experts’ testimony for this term. And we are persuaded by Dr. Pond’s testimony as we find it consistent with the claim language and the cited dictionary definitions. Ex. 2005,9 16:20–19:23. In contrast, we find Mr. Dietl’s testimony for this term contradicts the claim language and the cited dictionary definitions. See Ex. 2004 ¶¶ 55–57.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Thus, we view the combination of Benjamin144 and Benjamin703 as comprising a single disclosure in view of the incorporation by reference. See, e.g., Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Or at a minimum, the incorporation by reference provides an explicit motivation for one of ordinary skill in the art to combine the references’ teachings. See Kahn, 441 F.3d at 988; see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). In addition, however, Petitioner argues that “utilizing a bondpad to supply FIRE energy signals to the fire lines 214 like in Benjamin[]703 would have been an obvious combination of prior art elements to yield predictable results.” Pet. 45–46; Ex. 1002 ¶¶ 207–208. We agree with Petitioner’s argument and find that one of ordinary skill in the art would have found it obvious to combine Benjamin144 and Benjamin703 in the manner Petitioner does. In sum, we find that Petitioner shows that the combination of Benjamin144 and Benjamin703 teaches the bondpad limitation and provides sufficiently articulated reasoning with rational underpinning to support combining Benjamin144 and Benjamin703’s teachings.” slip op. at 31
Patent outcomesUS 7,290,864 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,290,864 - Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentablePTAB · Jul 30, 2024 · IPR2023-00313 · APJ John D Hamann · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–3, 5–12, 14, and 15 as obvious over Benjamin and Giere673; claims 4 and 13 as obvious over Benjamin, Giere673, and Parish.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not dispute this characterization of the level of ordinary skill in the art . . . , except that [Patent Owner] disagrees that a degree in Materials Science is sufficient.” PO Resp. 31–32 (citing Ex. 2003 ¶¶ 32–34). Patent Owner does not explain its basis for this disagreement, or how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience.” Id.; Pet. 6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’708 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We agree with Patent Owner. In particular, we agree that claim 1, for example, recites a region disposed adjacent a pair of heater arrays which is part of a broader region disposed between two adjacent ink vias, and it is the broader region that includes the two heater arrays. Ex. 1001, 8:31–35. We also agree that Petitioner’s proposed construction for adjacent (i.e., “next to and can include”) does not reflect the plain and ordinary meaning of adjacent. Rather, we conclude that the term “adjacent” should be afforded its plain and ordinary meaning (e.g., next to) in light of the claim language and intrinsic evidence. As we discuss below, Petitioner’s showing for claim 1 is consistent with the plain and ordinary meaning of “adjacent.” See infra Section V.C. We determine that no further constructions are needed for us to render our Final Written Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“We find persuasive Petitioner’s arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). We agree with Petitioner that one of ordinary skill in the art would have been motivated to combine the teachings to optimize the print quality using the temperature value measured by the TSR located on the substrate as taught by Giere673. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)). “‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023). Optimizing print quality is such a universal motivation. Ex. 1002 ¶¶ 181–182. We also agree with Petitioner and find that Benjamin and Giere673 address a similar problem (i.e., reduced print quality caused by the printhead operating outside its optimal temperature). Pet. 31 (citing Ex. 1002 ¶ 181). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. (citing Ex. 1002 ¶¶ 181–195). Accordingly, we find that one of ordinary skill in the art would have been motivated to make the proffered combination. Intel, 61 F.4th at 1379 ( “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We find persuasive Petitioner’s arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). We agree with Petitioner that one of ordinary skill in the art would have been motivated to combine the teachings to optimize the print quality using the temperature value measured by the TSR located on the substrate as taught by Giere673. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)). “‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023). Optimizing print quality is such a universal motivation. Ex. 1002 ¶¶ 181–182. We also agree with Petitioner and find that Benjamin and Giere673 address a similar problem (i.e., reduced print quality caused by the printhead operating outside its optimal temperature). Pet. 31 (citing Ex. 1002 ¶ 181). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. (citing Ex. 1002 ¶¶ 181–195). Accordingly, we find that one of ordinary skill in the art would have been motivated to make the proffered combination. Intel, 61 F.4th at 1379 ( “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 24
Patent outcomesUS 7,594,708 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,594,708 - PTAB · Jul 26, 2024 · IPR2024-00341 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–17, 19, 21–27, 29, and 30 because Petitioner showed a reasonable likelihood that claim 1 would be obvious over TS-23.140 and Ogawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“b) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the present record, Petitioner shows a reasonable likelihood of prevailing in its challenge to claim 1 as unpatentable over TS-23.140 and Ogawa.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) 3–5 years of experience in services and application implementation in communication networks,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 1–15, 21, 22). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we do not need to interpret expressly any claim term. 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)). We apply Petitioner’s understanding of the claim terms as above described.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner argues that TS-23.140 would have been implemented with a modem because “it was well-known to use a modem to enable communications over the networks described in TS-23.140,” “would have been a conventional and obvious way to implement what TS-23.140 describes,” and would have been “nothing more than utilizing familiar, known components to achieve a predictable result of facilitating TS- 23.140’s communications.” Pet. 9–10 (citing Ex. 1003 ¶¶ 61–63; Ex. 1004, 14, 17–19, 23–24; Ex. 1008 ¶¶ 27–28, 44, Figs. 1, 4); see also id. at 19 (summarizing the proposed combination). Petitioner also argues that there would have been a reasonable expectation of success in implementing a modem in TS-23.140. Id. at 10 (citing Ex. 1003 ¶ 63).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,406,733 - Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentablePTAB · Jul 15, 2024 · IPR2022-00734 · APJ Garth D Baer · IPR · Remand
On remand, the Board held claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 unpatentable as obvious over Heller and Quam, and over Heller, Quam, and Deaton.
RulingsRemand decision- RemandOther
“After our Final Written Decision (Paper 41) found no challenged claims unpatentable, the Director vacated our Decision and remanded the case back to the Board. Paper 43. With our authorization, Petitioner and Patent Owner filed Briefs on Remand. Paper 45 (“Pet. Remand Br.”), Paper 48 (“PO Remand Br.”). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we discuss below, we determine that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’737 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4–5. 1 Because the parties agree that the challenged claims of the challenged patent have an effective filing date before March 16, 2013, we apply the pre- AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 Heller, “The Site-Model Construction Component of the RADIUS Testbed System,” in Proceedings: ARPA Image Understanding Workshop (1997) (Ex. 1004, “Heller”). 3 Quam, “The Radius Common Development Environment,” in RADIUS: Image Understanding for Imagery Intelligence (1997) (Ex. 1005, “Quam”). 4 U.S. 2006/0235611 A1, Pub. Oct. 19, 2006 (Ex. 1006, “Deaton”). Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. at 5. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and 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).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that “this limitation should be interpreted broadly enough to encompass transmitting roof measurement information between components of the same computer system,” Pet. 11, whereas Patent Owner contends this limitation requires “transmitting the roof measurement information outside the roof estimate report system . . . such as to third-party systems.” PO Resp. 18. We agree with and adopt Petitioner’s construction. As we explained in IPR2016-00592, “[t]he claim term at issue requires only ‘transmit[ting]’ roof measurement information—it does not specify any particular source or destination for the transmission.” Ex. 1010, 20. In addition, the ’737 patent’s specification states that “the roof [report] generation engine 813 may transmit roof measurement information” and “some portion of the contents . . . of the [Roof Estimation System] 810,” which includes roof report generation engine 813, “may be stored on and/or transmitted over the other computer readable media 805.” Ex. 1001, 17:16–17, 16:13–17 (emphasis added), Fig. 8. Thus, because the ’737 patent’s specification expressly recognizes transmitting roof-estimate content between components of the same computer system, we maintain our construction from IPR2016-00592— that “transmission” includes transmission within the same system. See Ex. 1010, 20.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The at-issue language appears in preambles, which as a general rule are not limiting unless they are “necessary to give life, meaning and vitality to the claim.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (internal quotation marks omitted). Because claims 16 and 26 describe structurally complete inventions without their preambles, we find the preambles not limiting. In addition, even if the preambles were limiting, the Petition’s analysis, along with Dr. Forsyth’s supporting declaration, plainly indicate that the Heller-Quam RADIUS system includes these generic computing features because RADIUS is a software platform executed by a processor on a computer that utilizes memory. See, e.g., Pet. 20 (explaining that RADIUS is a “workstation-based image processing system,” that “runs on both SunMicrosystems and Silicon Graphics RISC-based workstations,” “utilizes ‘memory,’” and “comprises over 200,000 lines [of code]”); see also Ex. 1041 ¶¶ 36, 38–40. Thus, we agree with Petitioner that the Heller-Quam system teaches the preambles in claims 16 and 26.” slip op. at 11
Patent outcomesUS 9,135,737 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,135,737 - Roofr Inc. v. Pictometry International Corp.All claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00436 · APJ Garth D Baer · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Pershing-789 and Bailey, with Abhyanker added for claims 6, 7, and 14–18; the alternative Kennedy grounds were not reached.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contends one skilled in the art “would have had a Bachelor’s degree in an academic area emphasizing construction, architecture, and/or engineering, or similar discipline, and at least two years of experience with roofing measurement and estimation, aerial imagery use in roofing estimation, and roofing measurement software.” PO Resp. 4. Patent Owner’s definition is substantively similar to Petitioner’s. See Pet. 2 (“a person of ordinary skill in the art at the time of the alleged invention would have bachelor’s degree in architecture or an equivalent with at least five years of experience performing roof estimation”). We agree with and adopt Patent Owner’s definition with the added provision that, as we noted in our Institution Decision, “experience may compensate for formal education, and vice versa.” Paper 14, 7.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Cummings, qualifies as a skilled artisan. See PO Resp. 39–47. Instead, Patent Owner contends we “should give significantly more weight” to its expert’s testimony than to Petitioner’s because its expert “has much more relevant experience” and Mr. Cunningham’s opinions “are conclusory and merely repeat verbatim the arguments presented in the Petition.” PO Resp. 39. We disagree. We do not find that Patent Owner’s expert’s opinions are entitled to significantly more weight than Petitioner’s simply based on the experts’ relative experience. Instead, in our analysis below, where necessary, we have evaluated both experts’ opinions and we base our conclusions on the opinions’ persuasiveness. In addition, we do not find it problematic that the Petition repeats certain portions of Petitioner’s expert’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 43–47.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In light of Petitioner’s analysis as outlined above, we agree with Petitioner that together, Pershing-789 and Bailey teach “determin[ing] a footprint and predominant pitch of the roof by analyzing one or more image showing the roof; [and] determin[ing] an estimated roofing area of the roof based on the predominant pitch and the footprint of the roof,” as claimed. Further, given Petitioner’s rationale as outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support its assertion that it would have been obvious to combine Bailey’s predominantslope teaching with Pershing-789’s area calculation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 419 (2007).” slip op. at 10
Patent outcomesUS 9,183,538 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,183,538 - Roofr Inc. v. Pictometry International Corp.All claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00435 · APJ Garth D Baer · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–8, 10–13, and 15–17 as obvious over Pershing-789 and Abhyanker; claims 9 and 14 over the Pictometry combination; and claims 1–17 over Kennedy, Abhyanker, and Bailey.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for petitioner
“We agree with Petitioner that Mr. Cummings qualifies as a skilled artisan. Pet. Reply 2–7. As Petitioner notes, the ’800 patent’s computer-related features are fairly basic—i.e., “standard computer input devices, applications, and graphical user interface elements” that “would be familiar to and understood by one” with experience like Mr. Cummings’s. Pet. Reply 5–6 (citing Ex. 1001). As we explained in our Institution Decision, “[a]lthough Mr. Cummings may lack formal computer-related education, he ‘ha[s] extensive experience using software related to construction’ including ‘decades working with software related to construction modeling and estimation.’” Paper 16, 8 (quoting Ex. 1003 ¶ 6). Mr. Cummings also “ha[s] experience collaborating with software developers to create new software in my field.” Id. In light of the ’800 patent’s basic computing features, Mr. Cummings’s experience is sufficient. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 37–39.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We agree with Petitioner that Mr. Cummings qualifies as a skilled artisan. Pet. Reply 2–7. As Petitioner notes, the ’800 patent’s computer-related features are fairly basic—i.e., “standard computer input devices, applications, and graphical user interface elements” that “would be familiar to and understood by one” with experience like Mr. Cummings’s. Pet. Reply 5–6 (citing Ex. 1001). As we explained in our Institution Decision, “[a]lthough Mr. Cummings may lack formal computer-related education, he ‘ha[s] extensive experience using software related to construction’ including ‘decades working with software related to construction modeling and estimation.’” Paper 16, 8 (quoting Ex. 1003 ¶ 6). Mr. Cummings also “ha[s] experience collaborating with software developers to create new software in my field.” Id. In light of the ’800 patent’s basic computing features, Mr. Cummings’s experience is sufficient. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 37–39.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed
“Moreover, Petitioner’s proposed combination is sufficient for obviousness even if we accept Patent Owner’s proposed temporal requirement. Specifically, Petitioner’s rationale for adding Abhyanker’s user inputs (i.e., “allowing a user to designate a geographic position of a roof and to subsequently confirm that the roof location is correct would promote the accuracy of the system,” Pet. 24, 67 (emphasis added, Petitioner’s emphasis omitted)), explains why one skilled in the art would have provided Abhyanker’s lock pushpin option after placing a marker. See also Ex. 1003 ¶¶ 43, 127. Patent Owner’s argument, in contrast, assumes a skilled artisan could do no more than bodily incorporate Abhyanker’s placement and lock features without any thought as to sequence. That, however, is not the test for obviousness. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (noting that “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). For these reasons, and in light of the Petition’s analysis, see Pet. 24– 25, 33–35, 67, 74, we agree with Petitioner that its proposed combination teaches “responsive to receiving the designation of the building roof structure location, providing a second computer input capable of signaling user-acceptance of the building roof structure location within the first image, wherein user-acceptance is one or more affirmative steps undertaken by the user to confirm the designation of the building roof structure location,” as claimed.6” slip op. at 11
Patent outcomesUS 10,648,800 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,648,800 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00454 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that the Reavey–Chandhri combination met limitation 1h.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 11–15. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00455 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that Reavey and Chandhri disclose or suggest limitation 1[h].
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. And as a result, we find Petitioners have not demonstrated a reasonable likelihood of proving that the Reavey/Chandhri combination render independent claims 1 and 28 unpatentable, which is a deficiency that necessarily extends therethrough to all of the dependent claims challenged in all three grounds.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 11 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 12–16. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- BurdenDecided for patent owner
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315 - PTAB · Jun 10, 2024 · IPR2024-00404 · APJ Garth D Baer · IPR · Institution
Instituted inter partes review of claims 1, 3, 4, 7–10, 13, 14, 16–18, and 22 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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 in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“1. “frame mode” Petitioner proposes we construe “frame mode” the same as we did in IPR2021-00822 as “having the keyboard face down on a surface with the screen face up, and the base and display components forming a non-zero angle.” Pet. 8–9. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “content mode” Petitioner proposes we construe “content mode” consistent with Patent Owner’s construction during the ’844 Reexam, where Patent Owner “argued for and received a construction of [‘Content Mode’] as meaning ‘displaying some information that represents a higher-level construct into which content is grouped.’” Id. at 9 (citing Ex. 1005, 6). Further, “[t]his recitation is distinct from merely displaying individual things (e.g., applications) that may be grouped into a content mode.” Id. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,624,844 - Apple Inc. v. Chian Chiu LiAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00560 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–5, 6, 8–12, 14–16, and 18–20 are unpatentable as obvious over Ryu and Hodge, or Ryu, Hodge, and Stallings.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner, however, has not identified any disclosure in the ’564 patent that requires an affirmative exclusion for alternative triggers when a device has only a movement sensor. To the extent the specification addresses devices using only a physical movement sensor, it does not speak to whether such devices exclude other sensors or how such devices might affirmatively exclude alternative triggers. Rather, it simply addresses how a device may use a physical movement sensor to trigger gaze detection. Ex. 1001, 6:49–66. As a whole, the described scenarios encompass a device that operates in various modes using appropriate sensors to implement a desired mode. Ex. 1001, 6:31–7:48. Thus, Patent Owner’s position on claim scope is not persuasive and we agree with Petitioner that the claims are directed to methods and devices that operate in the claimed manner, even if they could be configured to operate in a different manner. We conclude that “only after” does not require further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan would have had “at least a bachelor’s degree in computer science, software engineering, or an equivalent degree with at least one year of experience in the fields of human computer interaction, software engineering or computer engineering in either a research or work capacity.” Pet. 3–4 (citing Ex. 1003 ¶ 30–32). Petitioner adds that “this hypothetical person would have experience with user interface design, user interface/mobile device software, and user interaction techniques, or their equivalent.” Id. at 4. Patent Owner does not address the level of skill in the art. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner does not otherwise challenge Petitioner’s assertions regarding Ryu and Hodge. See generally PO Resp. We find that the combination of Ryu and Hodge teaches the uncontested limitations and that skilled artisans would have had reason to make the combination as Petitioner explains. See Pet. 5–52. We have reviewed Petitioner’s contentions in light of the full record, and conclude that Petitioner has demonstrated by a preponderance of the evidence that Ryu and Hodge renders claims 1–5, 8, 9, 11, 12, 14–16, 18, and 20 obvious.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner disputes only whether Ryu teaches the claim limitation “performing gaze detection only after sensing the act,” which appears in each of the independent claims. PO Resp. 1, 6–10, 13–17. For that limitation, Petitioner relies on Ryu’s gaze detection performed after detecting the device’s physical movement. Pet. 20–24. Petitioner contends that Ryu teaches an electronic device in standby mode that requires sensed movement before changing its operating mode to active mode. Id. at 22. Petitioner contends that once the device is in active mode, it executes an application related to its front camera to determine if the user is gazing at the device. Id. at 22–24 (citing Ex. 1004, Fig. 8, 19:49–56; Ex. 1003 ¶¶ 58–59).” slip op. at 10
Patent outcomesUS 11,016,564 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,016,564
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.