• Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationAll claims unpatentable
  PTAB · Aug 20, 2025 · IPR2024-00668 · APJ Lisa L Tsang · IPR · Final written decision

  Claims 1 and 4 are unpatentable as obvious over Smith, Chan, and Bernstein (claim 1), Smith, Chan, Bernstein, Irwin, and Merhav (claim 4), and Tingleff, Chan, and Bernstein (claims 1 and 4).

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b) (emphasis added). Accordingly, a petition for inter partes review may be considered only if, among other things, it “identifies all real parties in interest,” and no real party in interest was served with a complaint alleging infringement of the challenged patent more than one year before the petition was filed. 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted).” slip op. at 8

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Based on the arguments and evidence of record, we determine that Patent Owner has not produced sufficient evidence to support a finding that STMicro should be named a real party in interest to this proceeding. At best, Patent Owner’s evidence and arguments establish only that Patent Owner previously filed a complaint against STMicro, asserting that STMicro infringed patents related to the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us does not demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1242, 1244 (“[A]n IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” (footnote omitted)).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner counters that the skilled artisan would have had “at least a ‘Master’s Degree in Electrical or Electronics Engineering, and approximately five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.’” PO Resp. 18 (citing Ex. 2019 ¶ 57). We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’648 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We find unavailing Petitioner’s reliance on Catalina to support its claim construction position. See Reply 2. In particular, although Petitioner contends the body of the claims “define[s] a structurally complete invention,” Petitioner does not explain how the claims additionally “use[] the preamble only to state a purpose or intended use for the invention,” as Catalina further requires. See Catalina, 289 F.3d at 808 (“a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention” (emphasis added)). In this regard, we discern no reason to interpret “[a] micro inertial measurement unit” as reciting only a purpose or intended use because the term, on its face, uses “micro inertial measurement” as an adjective that conveys further structural details of the unit. Accordingly, on the complete record, and for the reasons set forth in our Institution Decision, we maintain our construction that “[a] micro inertial measurement unit” recited in the preamble is limiting and requires a micro-sized inertial measurement unit, and that the structures recited in the limitations of the claims are limited to structures implemented as MEMS devices. Dec. 21–24.” slip op. at 14

  Patent outcomesUS 6,671,648 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,671,648
• Nintendo Co., Ltd. / Nintendo Of America Inc. v. American GNC CorporationAll claims unpatentable
  PTAB · Aug 20, 2025 · IPR2024-00667 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 3 are unpatentable under § 103 over Fujiyoshi, Kumar, Cox, and Townsend, and independently over Mitamura and Townsend.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerNot time barredDecided for petitioner

    “other things, it “identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted). Whether a non-party is a real party in interest is a “highly fact-” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have possessed a bachelor’s degree in electrical engineering or similar degree, with two to three years of practical experience designing and/or implementing systems that include sensors for measuring movement, such as acceleration and rotational position. . . . A skilled artisan could also have had more formal education and less practical experience, or vice versa. Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner states that “[a] person of ordinary skill in the art with respect to the ’122 Patent would have at least a five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.” PO Resp. 18 (citing Ex. 2019 ¶ 57). We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’122 patent and prior art of record, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 13

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

    “that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that any claim term requires construction. Pet. 6; PO Resp. 18. Accordingly, we do not explicitly construe any term.” slip op. at 14

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

    “Record evidence supports Petitioner’s contentions that a skilled artisan would have had reason to look to Kumar for further implementation details of a circuit that performs functions like those performed by Fujiyoshi. See Pet 24–26. For example, Dr. Young testifies that a person of ordinary skill in the art would have recognized that Kumar discloses the details, at a granular level, of Fujiyoshi’s capacitive sensing systems and would have looked to Kumar for understanding of how to implement Fujiyoshi’s system. Ex. 1002 ¶ 145. Patent Owner does not point to persuasive evidence to rebut this opinion. Moreover, Petitioner cites to Kumar, not only for an explicit disclosure of capacitive pickoff signals, but also for its disclosure of both DC bias and AC carrier signals and recognizing the applicability of an AC carrier pickoffs that operates without DC bias. Pet. 24–26 (citing Ex. 1005 3:65–4:2, 6:29–36). We credit Dr. Young’s testimony on this issue and agree with Petitioner that a person of ordinary skill in the art, looking at Fujiyoshi’s description of capacitive sensing systems, would be motivated to look to Kumar for its more detailed teachings of the implementation details of such systems and would combine these details to arrive at limitation 1(a). We determine that Petitioner has shown, by a preponderance of the evidence, that one of ordinary skill in the art would have been motivated to combine Fujiyoshi and Kumar in the manner argued by Petitioner.” slip op. at 37

  Patent outcomesUS 6,508,122 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,508,122
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Nov 4, 2022 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Yamazaki, Schubert, and Tadatomo; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We have reviewed Petitioner’s proposal and find it reasonable and consistent with the prior art, and apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

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

    “Third, and most significantly, Petitioner points to Shimizu, a patent filed in 1999, as repeatedly referring to phosphor as a garnet-based fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We agree that Shimizu appears to use the two terms interchangeably. For example, Shimizu states that “[t]he phosphor is specifically garnet fluorescent material” and “the fluorescent material is preferably yttrium- aluminum-garnet fluorescent material (YAG phosphor) activated with cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of Shimizu, but argues instead that it is “impermissible to rely on an entirely different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)). For the same reasons discussed above, we do not agree that Petitioner’s use of Shimizu is improper, but is instead a proper response to Patent Owner’s argument that a person of ordinary skill in the art would not have understood Yamazaki to disclose phosphor. Ariosa, relied upon by Patent Owner, confirms that the Board should consider an exhibit “for what it show[s] about the background knowledge that a skilled artisan would have possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face supports Ariosa’s interpretation of what the Board meant—that the Board was declining to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness. If that is what the Board meant, the Board erred. Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”). The Petition relies on Shimizu to show such background understanding. Pet. 27. Specifically, the Petition states that conventional LEDs “were made using the III-nitride material system, with semiconductor layers formed on sapphire substrates and combined with YAG phosphors to efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35). Thus, Shimizu is properly objective evidence supporting a finding that at least as early as 1999, a person of ordinary skill in the art would have used the terms “phosphor” and “fluorescent material” interchangeably. Moreover, Dr. Schubert’s textbook published in 2018 explicitly references Shimizu. Ex. 1039, 3-4. In this context, we find that Dr. Schubert’s textbook and testimony indicate that a person of ordinary skill in the art, at the relevant time, would have understood the terms to be interchangeable.” slip op. at 20

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

    “Based on the complete record, Petitioner establishes by a preponderance of the evidence that an ordinarily skilled artisan would have found the sapphire growth substrate obvious in light of Yamazaki’s disclosure. Petitioner cites Schubert to show an ordinarily skilled artisan’s knowledge about conventional blue LEDs as disclosed in Yamazaki, i.e., that “conventional blue LEDs were III-nitride-based LEDs that commonly included sapphire growth substrates.” See Pet. 71–72, 76–77; Ex. 1007 ¶ 27 (stating the disclosed light-emitting chip “is of a publicly known structure”); Ex. 1008, 166 (discussing “commonly used sapphire and SiC substrates”). We credit Dr. Dupuis’ testimony that is consistent with the prior art of record. Ex. 1035 ¶¶ 238, 248–251 (citing Ex. 1008, 166); Ex. 1007 ¶ 27; Ex. 1009, 1:10–17, 4:61–67; Ex. 1012, 243; Ex. 2013, 10:30–11:35. We are not persuaded otherwise by the deposition testimony of Dr. Dupuis pointed to by Patent Owner. PO Resp. 44 (citing Ex. 2016, 53:7– 12). This testimony confirms that Schubert does not explicitly discuss whether the sapphire growth substrate is included in an LED package. Id. (citing Ex. 2016, 53:7–12). However, Patent Owner does not dispute that sapphire growth substrates were commonly used (as confirmed by Schubert) or that a person of ordinary skill in the art would have reasonably expected a blue LED to include a sapphire growth substrate. See PO Resp. 42–43 (stating only that sapphire is one among several materials that could be used as a growth substrate); Sur-Reply 9–10 (same). Petitioner is not required to show that the proposed combination would have been preferred over other alternatives. Infineum USA L.P. v. Chevron Oronite Co. LLC, No. 2020-1333, 2022 WL 3147683, at *6 (Fed. Cir. Aug. 8, 2022) (“We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”). Instead, the question is whether a person of ordinary skill in the art would have understood the disclosure of Yamazaki, in light of the disclosure in Schubert, to teach or suggest the sapphire growth substrate limitation. As discussed above, persuasive evidence in the record establishes that this is true.” slip op. at 38

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

    “offered to show that the ’213 patent solved a long-felt, but unresolved need in the field and the merits of the challenged claims. See PO Resp. 67–68. First, Patent Owner has not shown a presumption of nexus because none of the cited evidence involves any particular product. Second, Patent Owner 22 Exhibit 2111 is a redacted version of Exhibit 2105. has not established that the any long-felt need resulted directly from the unique characteristics of the claimed subject matter. Other than a general statement that the technology addressed by the ’213 patent is a continuation of Dr. Nakamura’s prize-winning work (see Ex. 2112 ¶ 231), we see no evidence in the record that the subject matter recited by claims 1 and 2 of the ’213 patent, itself, solved the need for a more efficient LED without a heat sink or mirrors. See PO Resp. 65–66; Sur-Reply 23–24.” slip op. at 46

  Patent outcomesUS 10,644,213 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,644,213
• Unified Patents Inc. v. Synchview Technologies, LLCRehearing denied
  PTAB · May 28, 2020 · IPR2019-00470 · APJ Monica S Ullagaddi · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution because the record lacked evidence to determine the scope of “DVR” and whether the prior art met that limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”). We are unable to conclude, therefore, that there is a reasonable likelihood that Petitioner would prevail in demonstrating the unpatentability of any of the challenged claims.” slip op. at 5

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

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5

  Claim construction
  Patents in suitUS 6,788,882
• Facebook, Inc. / Whatsapp, Inc. et al. v. Uniloc 2017 LLCRehearing denied
  PTAB · Jan 17, 2019 · IPR2017-01428 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact the determination that claims 9–12, 14–17, 25, and 26 are unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; 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 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; 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 3

  Claim construction
  Patents in suitUS 8,995,433
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.All claims unpatentable
  PTAB · Oct 23, 2018 · IPR2017-01275 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 3–10, and 12–17 are unpatentable as obvious over the Admitted Prior Art and Betts; Petitioner obtained partial adverse judgment on Ground 2.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “Ground 2 based on the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), Petitioner filed a Request for Partial Adverse Judgment against itself with respect to Ground 2, pursuant to 37 C.F.R. § 42.73(b). See Paper 30 (modifying institution decision to institute on all challenged grounds presented in Petition); Paper 33 (Petitioner’s Request for 1 Patent Owner filed two versions of the Preliminary Response: Paper 6, to which access is restricted to the parties and the Board; and Paper 7, a publicly available, redacted version of Paper 6. 2 Patent Owner filed two versions of the Patent Owner Response: Paper 20, to which access is restricted to the parties and the Board; and Paper 21, a publicly available, redacted version of Paper 20. Partial Adverse Judgment as to Ground 2). We granted Petitioner’s Request for Partial Adverse Judgment on July 5, 2018. Paper 36 (granting adverse judgment as to Ground 2).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; 4 Petitioner defines “Admitted Prior Art” as certain portions of the ’641 patent, including Figure 1. Pet. 11–12 (citing Ex. 1001, 1:21–22, Fig. 1; Ex. 1004 ¶ 86). 5 U.S. Patent No. 3,738,497, issued June 12, 1973 (Ex. 1005) (“Betts”). 6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took effect on March 18, 2013. Because the application from which the ’641 patent issued was filed before that date, any citations to 35 U.S.C. §§ 102 and 103 are to their pre-AIA version. 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). Petitioner relies on the testimony of Alan Anderson, who testifies that a person with ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a similar discipline, or the equivalent experience, with at least two years of experience in the field of aircraft interior design.” Pet. 29 (citing Ex. 1004 ¶¶ 27–29). Patent Owner does not address Petitioner’s proposal, or offer a competing proposal for a person of ordinary skill in the art. Based on our review of the record, we adopt Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 8

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear.7 37 C.F.R. § 42.100(b). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

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

    “Based on our review of the evidence and arguments, we find that one of ordinary skill in the art would have been motivated to modify the Admitted Prior Art lavatory by replacing the flat forward wall with the contoured forward wall of Betts. Petitioner submits convincing argument based on the testimony of Mr. Anderson, that designers of airplane interiors were concerned about adding space to the cabin and that the Betts contoured wall increased interior space. Pet. 22–25 (citing Ex. 1004 ¶¶ 57–59). Betts itself backs up this testimony by stating that one of the goals of its design is “to provide more passenger room.” Ex. 1005, Abstract. We also agree with Petitioner’s assertion that Figure 1 of Betts depicts a passenger seat further aft in the cabin than it could have been if the wall were flat with no recess, and merely extended up from the bottom portion of the wall. See Betts Fig. 1; Pet. 23–24. Betts therefore depicts how the contoured wall and recess provide more passenger space when compared to a flat, vertical wall, and Betts discusses the ability of its design to save space. As such, Betts adequately supports the proposed modification of the prior art flat forward wall as shown in the Admitted Prior Art. Patent Owner’s argument that flat forward lavatory walls co-existed with the Betts design for years without modification, even if accurate, does not outweigh the more convincing evidence and argument supporting Petitioner’s position based on Betts and the Anderson Declaration. In addition, Patent Owner’s argument that one would need to “totally deconstruct” Betts in order to add a lavatory to Betts misapprehends Petitioner’s proposed modification. Petitioner proposes to replace a lavatory flat forward wall as shown in the Admitted Prior Art with the Betts contoured wall, not add a lavatory behind the Betts contoured wall. See Pet. 22, 24; Reply 4–5. Although we do not apply collateral estoppel for the reasons provided above, we note that our findings regarding the proposed combination and modification are consistent with the Federal Circuit’s decision in the related case. See B/E Aerospace, 709 F. App’x at 694 (rejecting Patent Owner’s argument that Petitioner’s combination required adding lavatory to Betts). Based on the foregoing, we find that one of ordinary skill in the art at the time of the invention would have been motivated to modify the lavatory flat forward wall in the Admitted Prior Art by replacing it with the contoured forward wall of Betts.” slip op. at 14

  Patent outcomesUS 9,073,641 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,073,641
• Apple Inc. / Facebook, Inc. et al. v. Uniloc Luxembourg S.A.Rehearing denied
  PTAB · Sep 6, 2018 · IPR2017-00222 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its determination that claims 1 and 2 are unpatentable over Vuori and Malik.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 2

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

    “allegedly had no opportunity to brief. However, Patent Owner was given notice in our Decision on Institution that its arguments concerning the recited “list” were arguments concerning claim scope and that Patent Owner” slip op. at 2

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Vuori did not teach transmitting a “list.” Final. Dec. 32 (noting that Patent Owner relies on language in the Specification describing Figure 8); Prelim. Resp. 13−14. Then, we made two factual determinations based on the evidence of record, in light of Figure 8, which Patent Owner raised, and in light of the description of Figure 10, which Petitioner relied on as disclosing the “list.” See, e.g., Final Dec. 31 (noting arguments by Petitioner regarding Figure 10 and paragraph 47 of Vuori). Thus, we supported our determination based on evidence of record provided by Patent Owner and Petitioner. We discussed the testimony of Mr. Easttom and ultimately did not credit it in its entirety. Id. at 33 (explaining that Mr. Easttom’s testimony of “one value at a time” “at best, appears to focus only on the SVM fetcher, which requests the ‘current’ value of some SVM presentity’s information,” and finding that Vuori does not support the testimony or Patent Owner’s narrow view of Vuori in this regard).” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “have not followed the holding in In re Magnum Oil Tools Int’l, 829 F.3d 1364 (Fed. Cir. 2016). Req. Reh’g. 3−4. With regard to claim construction, it was Patent Owner, not Petitioner, who attempted to paint Vuori as teaching transmission of “one value at a time.” Final Dec. 31 (“Patent Owner urges that we focus on Vuori’s explanation of distributing presence information . . . ‘one value at a time’.”). We analyzed Figure 8 of Vuori because Patent Owner relied on that figure as support for its contention that Vuori did not teach transmitting a “list.” Final. Dec. 32 (noting that Patent Owner relies on language in the Specification describing Figure 8); Prelim. Resp. 13−14. Then, we made two factual determinations based on the evidence of record, in light of Figure 8, which Patent Owner raised, and in light of the description of Figure 10, which Petitioner relied on as disclosing the “list.” See, e.g., Final Dec. 31 (noting arguments by Petitioner regarding Figure 10 and paragraph 47 of Vuori). Thus, we supported our determination based on evidence of record provided by Patent Owner and Petitioner. We discussed the testimony of Mr. Easttom and ultimately did not credit it in its entirety. Id. at 33 (explaining that Mr. Easttom’s testimony of “one value at a time” “at best, appears to focus only on the SVM fetcher, which requests the ‘current’ value of some SVM presentity’s information,” and finding that Vuori does not support the testimony or Patent Owner’s narrow view of Vuori in this regard).” slip op. at 3

  Claim construction§ 103 obviousness
  Patents in suitUS 8,243,723
• Apple Inc. / Snap Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Rehearing denied
  PTAB · Sep 6, 2018 · IPR2017-00221 · APJ Jennifer S Bisk · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining its construction of “local network” and “external network”; it did not revisit whether Malik disclosed those limitations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2

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

    “cannot be the differentiator between ‘local’ and ‘external’ networks” as alleged by Patent Owner.” Reh’g Req. 3. As we explained in our Final Written Decision, we construed the two terms to be relative. Final Dec. 10– 15. In other words, whether a network is “local” or “external” depends on the perspective of a particular device. We are not persuaded that Figure 5 indicates otherwise. In Figure 5, two networks are labeled “local” (i.e., network 204 and network 504), and one network (network 102) is labeled “Internet.” Ex. 1001, Fig. 5. From the perspective of IVM client 508, network 504 is local; however, from the perspective of IVM client 208, network 504 is external. This is consistent with the description of Figure 5, which states that IVM client 508 “may be located in a user’s residence and be connected to a local IP network 504,” which “can be a WiFi network or a local area network (i.e., LAN), which is also within the user’s residence.” Ex. 1001, 19:66–20:4. At the same time, the ’890 patent describes IVM client 508 as a “global IVM client.” Id. at 20:10–14. Therefore, we do not agree that our construction “yields a non-sensical understanding” of these terms. See Reh’g Req. 4.” slip op. at 4

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Owner’s proposed construction. Although Dr. Forys may have used the term “types” loosely to distinguish between local and external networks, we are not persuaded that he used that word in the same way Patent Owner is using it. See Reh’g Req. 6 (citing Ex. 1003 ¶ 56 (Dr. Forys stating that “[t]he variations among the independent claims are mostly related to different types of networks.”)). The word “type” is often used to distinguish things with different characteristics, and Patent Owner does not persuade us that, in the context of this case, the word references any particular characteristic of a network. Instead, we read Dr. Forys’s testimony as using the word “type” to distinguish between networks that differ solely based on the relative locations of the different networks. This is consistent with the rest of his testimony. See, e.g., Ex. 1003 ¶¶ 64–70 (Dr. Forys explaining his understanding of the difference between “external network” and “local network” to be solely based on the relative location of the networks). Fourth, as explained in our Final Written Decision, we give “little weight to” the quoted testimony of Mr. Easttom, in which he states that the terms are “analogous to the terms ‘private network’ and ‘public network’” because this testimony “is not explained or supported in any way.” Final Dec. 14 (quoting Ex. 2001 ¶ 24). We are not persuaded otherwise by Patent Owner’s quotation from the next paragraph of testimony in which Mr. Easttom discusses claim differentiation. Reh’g. Req. 6–7 (quoting Ex. 2001 ¶ 25 (“A POSA would understand from this explicit claim differentiation the” slip op. at 6

  Claim construction
  Patents in suitUS 7,535,890
• Google LLC v. Uniloc Luxembourg S.A.Institution denied
  PTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9

  • Other 314aInstitution denied discretionary otherDenied

    “authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,995,433
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing denied
  PTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing

  The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3

  Claim constructioncites Markman
  Patents in suitUS 9,365,292

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.