• Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentable
  PTAB · Apr 25, 2025 · IPR2024-00079 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–6, 8–20, and 23–31 are unpatentable as obvious over Kenley and Long; the Board did not reach the alternative ground.

  RulingsFinal written decision

  • Expert testimonyOther
  • Skill levelSkill level petitioner adoptedDecided for petitioner
  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “(5) Analysis and Conclusion as to Motivation to Combine We conclude a preponderance of the evidence supports Petitioner’s” slip op. at 48

  Patent outcomesUS 9,218,348 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,218,348
• Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentable
  PTAB · Apr 25, 2025 · IPR2024-00078 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–6 and 8–11 are unpatentable as obvious over Kenley and Long; the Board did not reach the alternative ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner

    “the ’478 patent, the applicant clearly and plainly informed the Office that an “[e]xemplary” embodiment of “searching the first temporary storage location for the archive file,” as recited in then-pending claim 34 and step [1.4] of issued claim 1, is found at specifically cited portions of the ’478 patent specification. See Ex. 1002, 147 (“Exemplary support may be found at . . . .”). Those specifically cited disclosures describe how smart data manager 15 “examines” input buffer 20 “for the presence of archive files” or equivalently “to determine whether any archive files are stored therein.” Ex. 1001, Fig. 2A (step 100), 5:39–42, 6:19–27. Based on this prosecution history, we conclude that in one embodiment of claim 1, searching the first temporary storage location for the archive file per step [1.4] is satisfied by examining the first temporary storage location for the presence of an archive file. We reach this conclusion even if the referenced portions of the ’478 patent specification are not regarded as being definitional with respect to the “searching” requirements of step [1.4].” slip op. at 26

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

    “(5) Analysis and Conclusion as to Motivation to Combine We conclude a preponderance of the evidence supports Petitioner’s” slip op. at 51

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

    “Accordingly, we conclude Petitioner has shown by a preponderance of” slip op. at 77

  Patent outcomesUS 8,473,478 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,473,478
• Dropbox, Inc. / Microsoft Corporation v. Datanet, LLCAll claims unpatentable
  PTAB · Apr 25, 2025 · IPR2024-00080 · APJ Bach V Hoang · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1–8, 10–16, and 18–21 as obvious over Sweat, and claims 9 and 17 as obvious over Sweat and Schneider.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Patent Owner does not dispute this assessment. See PO Resp. 10–11 (“Patent Owner agrees to this definition proposed in the Petition.”). Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’850 Patent. Accord Inst. Dec. 7–8.” slip op. at 8

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

    “construction principles, and does not revise or ignore the explicit language of the claims.”). In that vein, “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Hockerson–Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed.Cir.1999); accord Phillips, 415 F.3d at 1314 (“[T]he context in which a term is used in the asserted claim can be highly instructive.”). Patent Owner’s interpretation that “the current version” requires two current versions — one locally stored current version and a corresponding remotely stored current version — asks us to improperly adopt a claim construction which ignores explicit claim language and context in order to read unrecited features into the claim. The limitation in question, more fully and in better context, recites “storing the selected previous version . . . as the current version on the local storage location.” Ex. 1001, 9:24–26 (emphasis added). The express language shows that the claim is specifically directed to the current version on the local storage location and not any possible remote current version. As such, even if there were a “current version on the remote storage location” which corresponds to and is kept in parity with the current version on the local storage location, i.e., a backup copy of the locally stored current version, the claim does not recite that feature, establishing that it does not require that feature. Further, as to the context of the claim, the term in question is part of a recited method of restoring a file to a previous version of the file on a local computational machine, rather than a method for maintaining parity of remotely stored backup files during that restoration process. See id. at 8:63–9:28. As such, the explicitly recited claim language and the context of the claim do not support reading an unrecited remote backup feature into the claim.” slip op. at 11

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

    “been obvious to use the “Download” feature described by Sweat to replace a corrupted or otherwise compromised file, thus meeting “storing the selected previous version . . . as the current version on the local storage location.” Pet. 60–62. First, regarding the technical operation of Sweat’s download function, Petitioner explains that a user “download[s] a version of [a] file from the server 106 to the local computer 104” and selects a local “target location to save the selected file.” Id. at 61 (citing Ex. 1006, 10:58–63). Sweat’s download function “[c]opies the file or folder to the user’s local computer” and can “overwrite files that exist on the user’s local computer, as desired.” Ex. 1006, 5:49–55. From those disclosures, Petitioner asserts it would have been obvious to use Sweat’s download function “to restore a previous version of a file by copying the file to the user’s local computer and overwriting the current version of the file on the user’s local computer, so as to save the restored file as the new current version of that file.” Pet. 62 (citing Ex. 1004 ¶¶ 125– 126). Petitioner explains that the download function would be used in such a manner where a user “desire[s] to restore a previous version of the file to replace the current version for example, in the case where the newest version of the file has become corrupted or where desired data has been deleted from” slip op. at 21

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “We agree with Petitioner. Sweat’s description of its “Viewing Files” feature explains that “a user must install the appropriate viewer to open and view drawing files.” Ex. 1006, 23:38–41. Sweat lists examples of such viewers including software applications such as Volo™ View Express. Id. at 23:45–46, 23:63–67. While Sweat does not list a CAD file creating application in its exemplary list of viewers in that “Viewing Files” section (see id. at 23:38–24:35), elsewhere, Sweat states that a CAD application, e.g., “AutoCAD®,” is “drawing/viewing software utilized by the viewer” (id. at 23:29–33). Furthermore, Petitioner’s declarant offers undisputed testimony that AutoCAD is software for creating CAD drawing files and can also be used to view those created CAD drawing files. Ex. 1024 ¶ 39 (citing Ex. 1029, 19–23, 541–542). On that evidence, we agree a POSITA would understand that Sweat describes using a viewer to preview previous versions of CAD drawing files and that Sweat also describes AutoCAD (which creates CAD drawing files) can be used as a viewer. In light of that understanding, we agree it would have been obvious to use AutoCAD, i.e., “an application that created the file,” to preview previous versions of that file. Pet. 62–63. We also agree that it would have been rational to do so because the same already locally available software application which created the file could then be used to view the file. Id.; see Ex. 1004 ¶ 128. Owner dismisses Petitioner’s obviousness argument as “irrelevant,” and, instead, argues that Sweat does not disclose the claimed features. PO Sur- Reply 16–17; see PO Resp. 39–40. In particular, Patent Owner argues Sweat “discloses the use of specialized viewing software to view the related file” and emphasizes that “CAD software is clearly not being used in Sweat’s ‘View in Window’ functionality” PO Resp. 39–40 (citing Ex. 1006, 23:39–51); PO Sur-Reply 17. While it may be the case that Sweat does not outright disclose the features recited in the claim, those arguments do not show fault in Petitioner’s case that the claimed features would have been obvious. See CRFD Rsch., Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017) (“Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.”); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) (“A claimed invention may be obvious even when the prior art does not teach each claim limitation.”), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). Accordingly, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claim 2 is obvious over Sweat.” slip op. at 28

  Patent outcomesUS 10,585,850 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,585,850
• Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · Mar 21, 2025 · IPR2023-01460 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Dua, Hong, and Lockwood; the Board did not reach the additional grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1003 ¶¶ 43–45); see also PO Resp. 13 (“Nike applies lululemon’s proposed level of skill in the art.”). There being no dispute, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees, and 1 US 3,641,603, issued Feb. 15, 1972 (Ex. 1003, “Lockwood”). 2 US 2005/0193592 A1, published Sep. 8, 2005 (Ex. 1004, “Dua”). 3 US 6,558,784 B1, issued May 6, 2003 (Ex. 1011, “Norton”). 4 H. Hong, The development of 3D shaped knitted fabrics for technical purposes on a flat knitting machine, INDIAN JOURNAL OF FIBRE & TEXTILE RESEARCH, VOL. 19, PGS. 189–194 (Sep. 1994) (Ex. 1005, “Hong”). 5 US 2006/0053658 A1, published Mar. 16, 2006 (Ex. 1006, “Voughlohn”). notes that our Institution Decision adopted that construction, i.e., “that the ‘domed, three dimensional structure’ of the ‘flat-knitted element,’ recited in claims 1, 10, and 11, is formed ‘during the flat-knitting process.’” PO Resp. 12 (quoting Inst. Dec. 6). Thus, the parties make clear that the claims do not encompass forming the claimed “three-dimensional structure” after the flatknitting process is complete. Thus, we maintain the construction in our Institution Decision that the claimed “central portion having a domed, threedimensional structure” must be formed during the flat-knitting process, and not afterward.” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Nike and its expert mischaracterize Hong. After close review of the opinions of both parties’ experts, we credit the opinion of lululemon’s expert as more consistent with Hong’s disclosure than that of Nike’s expert. In particular, lululemon’s expert points to Hong’s unmistakable and explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (quoting Ex. 1005, 5) (emphasis added). That disclosure by Hong of “knitting directly” the 3D shape clearly suggests it is formed as part of Hong’s flat-knitting process, and not as part of some post-knit seaming process. Hong’s additional disclosure of “diminish[ing] the labour cost inherent to the use of two-dimensional fabrics” also cuts against Nike’s notion of an additional step of “forming that two-dimensional pattern piece into a three-dimensional structure” following the flat knitting step. See PO Resp. 21–22.” slip op. at 9

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

    “d. Conclusion For all the above reasons, we find that the combination of Dua, Hong, and Lockwood teaches or suggests an article of footwear having “a domed, three-dimensional structure” that is formed during “a flat-knitting process” and “shaped to extend above the plane” of “flattened” side portions, as recited in claims 1 and 11. We also find that one skilled in the art would have a reasonable expectation of succeeding in forming an article of footwear having such a domed, three-dimensional structure as a result of combining the teachings of Dua, Hong, and Lockwood. And, because Nike does not otherwise contest that one skilled in the art would have had sufficient reason to combine the teachings of Dua, Hong, and Lockwood or that such combination discloses the remaining elements of claims 1 and 11, we need not further address those uncontested elements. See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“The Board, having found the only disputed limitations together in one reference, was not required to address undisputed matters.”). Thus, we conclude that lululemon demonstrates, by a preponderance of the evidence, that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood.” slip op. at 20

  Patent outcomesUS 9,730,484 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,730,484
• Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentable
  PTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43

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

    “Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24

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

    “As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55

  Patent outcomesUS 9,679,286 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,679,286
• Nintendo Co., Ltd. / Nintendo Of America Inc. v. Gamevice, Inc.All claims unpatentable
  PTAB · Oct 29, 2024 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Willner and Park; the Board did not reach the other instituted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires “a mechanical engineering degree” whereas Petitioner’s definition allows for a degree in “mechanical, electrical, or computer engineering.” See Pet. Reply 16 (citing Pet. 13). However, Mr. Kitchen states that he qualifies as one of ordinary skill in the art based on Patent Owner’s proffered definition “even without an undergraduate degree in mechanical engineering” because he has “over 40 years of experience in the design and development of interactive products, including specifically with respect to handheld gaming devices.” Ex. 1033 ¶ 7 (citing Ex. 1002 ¶¶ 24–30). Mr. Kitchen asserts that his experience is in “the same category of products claimed in the ’393 patent and described in the prior art references at issue in this proceeding.” Id. In view of this and based on the complete record before us, we view the parties’ proposals as substantially the same because Petitioner’s proposed definition includes the requisite education Patent Owner’s definition requires. Thus, we find (as we did in the Institution Decision) that Petitioner’s level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’393 patent and the prior art of record. See Inst. Dec. 20–21 (citing Okajima, 261 F.3d at 1355). More particularly, we do not agree with Patent Owner that the education component for the level of ordinary skill in the art for computing gaming devices would be limited to just mechanical engineering. We note that, based on the record and evidence before us, our decision and analysis would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 10

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

    “After reviewing the full record, we determine that it is unnecessary to construe the term “confinement structures,” as it appears in the limitation “a pair of confinement structures” to reach a determination in this proceeding. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). However, we will address the parties’ dispute regarding whether the prior art discloses or teaches physical component(s) that hold(s) a computing device within our merits analysis below. The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803).” slip op. at 12

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

    “First, the test for obviousness “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, . . . but rather whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also Pet. Reply 11–12 (arguing the same). Second, we disagree with Patent Owner’s assertion that the proposed combination would fail “to retain[] computing device 10 in position during normal user operation” because Park’s adjustable bridge “configuration does not allow mobile phone (1) to be seated for stability in the device.” PO Resp. 20 (citing Ex. 1004 ¶ 42; Ex. 2004 ¶ 68). At the outset, we note that Patent Owner’s argument mischaracterizes the disclosure of Park. Instead, we find Park discloses that a “basic configuration of [Park’s] game pad device for a mobile phone according to the present invention” “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Ex. 1004 ¶¶ 25, 41. Although Park discloses that “mobile phone (1) may come loose during gaming or become detached in severe cases” (id. ¶ 41), we do not view this disclosure to otherwise negate Park’s teaching that its adjustable bridge (30,40) “sufficiently allows mobile phone (1) to be mounted on the device according to the present invention and used.” Id. We credit Mr. Kitchen’s declaration testimony to that effect. See Ex. 1033 ¶ 47 (declaring that one of ordinary skill in the art would have “understood this disclosure to mean that a computing device (mobile phone) would have been secured by the device for normal use . . . as part of a handheld gaming device.”).” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We agree with Petitioner and find more credible Mr. Kitchen’s opinion regarding “normal user operation.” In doing so, we credit Mr. Kitchen’s opinion that Willner’s sidewalls would “function to secure the sides of the computing device and hold it in place” and, “[i]n the combination, Park’s bridge would be adjusted to reduce the length of the bridge and thereby ‘mount’ a computing device by having Willner’s side walls (confinement structures) ‘apply pressure’ to opposing sides of the computing device.” Ex. 1002 ¶¶ 154–156 (citing Ex. 1004 ¶¶ 38–41). We note that the ’393 patent operates in a similar manner using a sufficient compressive load to hold a computing device. More particularly, the ’393 patent discloses that [t]he expansion and contraction of the distance between the pair of confinement structures 316, facilitates placement of the computing device 302 between the pair of confinement structures 316, the application of sufficient compressive load being placed on the computing device 302 to securely hold the computing device between the pair of confinement structures 316. Ex. 1001, 10:11–20. Thus, we find Mr. Kitchen’s opinion credible and supported by the complete record. Accordingly, we find that Petitioner has proven, by a preponderance of the evidence, that the combination of Willner and Park teaches or suggests “a pair of confinement structures,” as recited by limitation 1[b][1].” slip op. at 22

  Patent outcomesUS 10,391,393 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,391,393
• Masimo Corporation v. Apple Inc.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2023-00734 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious under §103 over the combinations of prior art identified in the eight grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Cf. PO Resp. 14 (Patent Owner stating that “[t]he analysis presented [in the Response] remains unchanged even if [Petitioner’s proposed] skill level is applied.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12

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

    “Petitioner proposes constructions for certain terms concerning the cover material—“a cover formed from a dielectric material,” “a transparent substrate,” and “a cover comprising a non-conductive material”—and window terms such as “defines at least one window” and “window defined.” Pet. 7–10. Patent Owner states that it does not take a position regarding Petitioner’s offered constructions. PO Resp. 15. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 13

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

    “Patent Owner argues that a person of ordinary skill in the art would not have been motivated to make the proposed combination and would not have had a reasonable expectation of success in making that combination. See, e.g., PO Resp. 34–35. These arguments are not persuasive at least because Patent Owner’s motivation requirement and implied definition of success are not sufficiently tied to the claimed invention. See, e.g., Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375 (Fed. Cir. 2023) (“Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”). Patent Owner would require a successful outcome to be “quick and efficient wireless charging.” See PO Resp. 34–35. In making these arguments, Patent Owner is improperly superimposing the purported goals and purpose of Honda, the secondary reference, onto the ordinary artisan. See, e.g., id. at 41–45. However, the intended purpose of a prior art reference does not control the obviousness inquiry. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Our reviewing court recently explained: The [motivation-to-combine] inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue. A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed and that a skilled artisan may be motivated to combine particular features of different references, e.g., to secure some benefits at the expense of others, even when bodily incorporation would be impossible or inadvisable. Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). Petitioner’s combination yields the benefit of the addition of wireless charging capability to a biosensor device. A person of ordinary skill in the art would find that benefit to be a motivating reason to make the combination. See, e.g., Ex. 1003 ¶ 176 (Dr. Duckworth’s motivation opinion based, in part, on “Kotanagi’s own statement that its rechargeable battery can be recharged ‘in a contactless state.’”); id. ¶ 149 (Dr. Duckworth describing a motivating factor in “Honda’s teaching of a wireless receive coil near a rear opening similar to that taught in Kotanagi (where both Honda’s and Kotanagi’s openings have a cover glass)” and opining that, in the proposed modifications, “the resulting magnetic flux would pass through the cover glass, as taught by Honda”); see also Ex. 1052, 45:16–46:2 (Dr. Anthony, on cross-examination and after being asked whether wireless charging is an improvement over wired charging for a consumer watch, responding that “in some instances it could be, and in others it may not be.”). And, as to a reasonable expectation of success, Patent Owner admits that “Petitioner has presented a device configuration in which a wireless charging coil could be provided in Kotanagi’s through hole 22.” PO Resp. 54; see also id. at 3 (Patent Owner arguing that “the size of coil that could be provided in this allegedly available space would be small and would significantly limit the amount of wireless power signal transmission,” but not arguing that even Patent Owner’s purported size-limited configuration would be inoperative); see, e.g., Ex. 1003 ¶¶ 155–156 (Dr. Duckworth credibly testifying that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Kotanagi and Honda).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “would limit the size and positioning of a charging coil, and that the purported combination, as characterized by Patent Owner, would result in a “significantly degrad[ed] wireless charging efficiency” of Honda’s coil. PO Resp. 41–42; see id. at 36–45, id. at 55 (Patent Owner arguing that, “given the size restrictions imposed by Kotanagi,” the housing and cover glass cannot be expanded to allow for a larger coil). Patent Owner further argues that the combination would have to be configured a certain way and that the resulting configuration would “would frustrate Honda’s goals and intended purpose.” Id. at 37–38, 40–41; see also, e.g., id. at 43–44 (Patent Owner arguing that the combination, as characterized by Patent Owner, would inject noise and interference that are contrary to Honda’s goals of quick and efficient power transmission). We do not agree with this line of argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). The person of ordinary skill in the art is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). As the Supreme Court recognized in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. Dr. Duckworth persuasively testifies that, “if, under the relevant engineering trade-offs, a POSITA wanted to increase charging speed, consistent with Honda’s teachings, Honda would have provided the motivation and information to either re-size or reshape Kotanagi’s protrusion and/or cover glass to provide for a larger coil.” Ex. 1060 ¶ 346; see also Ex. 1003 ¶¶ 157–159 (“[I]t would have been feasible to make the second modification option discussed above: to enlarge Kotanagi’s opening and cover glass to make room for a coil behind the cover glass, surrounding the LED and PD.”); Ex. 2039, 47:5–10 (“[A] POSITA would view Honda’s teachings to either modify Kotanagi to position wireless charging coil behind Kotanagi’s cover glass or enlarge the Kotanagi’s opening and cover glass to make room for a coil behind the cover glass.”); PO Resp. 44 (Patent Owner admitting that Honda teaches that metal is inferior for power transmission and “[t]his is precisely why Honda seeks to provide glass for its rear cover.”). And, although the references express certain goals, Patent Owner does not adequately identify any disclosure in either reference that disparages Petitioner’s articulated combination. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). Even if, as Patent Owner argues, the proposed combination would not quickly charge the device, this is not dispositive. Dr. Anthony agrees that “[d]evices, depending on their use and their function, can benefit from either fast charge or trickle charge or a little bit of charge.” Ex. 1052, 19:3–6. “It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” Intel Corp., 21 F.4th at 800 (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). Based upon the final record before us, we find that a person of ordinary skill in the art would consider even a slow charging configuration to be a suitable option.” slip op. at 29

  Patent outcomesUS 10,942,491 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,942,491
• Masimo Corporation v. Apple Inc.Some claims unpatentable
  PTAB · Sep 23, 2024 · IPR2023-00634 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–5, 9, 10, 14, 15, and 17–20 are unpatentable as obvious; claims 6–8, 11–13, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Cf. PO Resp. 16 (Patent Owner stating that “[t]he analysis presented [in the Response] remains unchanged even if [Petitioner’s proposed] skill level is applied.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11

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

    “We find Patent Owner’s position to be persuasive. Not only are the cover and biosensor module recited separately in the list of components of the device of claim 9, we also agree that the “disposed over” claim language establishes the configuration of two separate components relative to each other. Additionally, the claim language that requires the cover to be “configured to pass optical signals to and from the biosensor module” supports an interpretation where the cover is separate from the biosensor module, otherwise it seemingly would be passing signals to and from itself. The understanding that the cover is separate from the biosensor module in claim 9 is consistent with the Specification’s description of an embodiment that tracks the language of claim 9 and speaks of the two elements as separate, individual components, namely the statement that “[a] biosensor module may be disposed within the opening of the housing” and “[a] rear cover may be disposed over the biosensor module.” Ex. 1001, 2:59–62; see also id. at 2:56 (the same paragraph beginning with “Some embodiments . . .”). Petitioner asserts that its proposed construction is consistent with the claim language, arguing that “the word ‘cover’ naturally suggests that its role is to be ‘disposed over,’” and that “[a] cover can be part of a module just as a clear plastic lid can be both disposed over, and part of, a container, allowing a view of its contents.” Pet. Reply 4. We disagree with Petitioner’s analogy. Although a clear lid may be over a jar, it cannot be said to be “disposed over” the container consisting of both the jar and the lid because it then would be disposed over itself.” slip op. at 14

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

    “Patent Owner argues that the proposed combination will result in a configuration “that is contrary to Honda’s teachings and its stated goals and purpose of achieving quick and efficient wireless charging.” PO Resp. 30– 31. Patent Owner’s focus on these properties is misplaced. We agree with Petitioner that characteristics such as charging speed and efficiency are not claimed. See Pet. Reply 1 (“[T]he ’783 patent does not disclose, let alone claim, sizing or other details [Patent Owner] Apple asserts are necessary for successful wireless charging.”); id. at 6 (“[C]harging speed [is] not claimed.”). Rather, the claim drafter utilized broad language to encompass a biosensor device having the capability to wireless charge through a cover— both good configurations and those that Patent Owner argues are inferior. And, even if the proposed combination does not yield a commercially viable product, as Patent Owner implies, the broad claim scope would hinder an innovating competitor’s ability to utilize and test that purported less desirable combination on the way to development of a better device. Patent Owner argues that a person of ordinary skill in the art would not have been motivated to make the proposed combination and would not have had a reasonable expectation of success in making that combination. See, e.g., PO Resp. 31. These arguments are not persuasive at least because Patent Owner’s motivation requirement and implied definition of success are not sufficiently tied to the claimed invention. See, e.g., Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375 (Fed. Cir. 2023) (“Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”). Patent Owner would require a successful outcome to be “quick and efficient wireless charging.” See PO Resp. 31. In making these arguments, Patent Owner is improperly superimposing the purported goals and purpose of Honda, the secondary reference, onto the ordinary artisan. See, e.g., id. at 37–41. However, the intended purpose of a prior art reference does not control the obviousness inquiry. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Our reviewing court recently explained: The [motivation-to-combine] inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue. A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed and that a skilled artisan may be motivated to combine particular features of different references, e.g., to secure some benefits at the expense of others, even when bodily incorporation would be impossible or inadvisable. Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). Petitioner’s combination yields the benefit of the addition of wireless charging capability to a biosensor device. A person of ordinary skill in the art would find that benefit to be a motivating reason to make the combination. See, e.g., Ex. 1003 ¶ 121 (Dr. Duckworth’s motivation opinion based, in part, on “Kotanagi’s own statement that its rechargeable battery can be recharged ‘in a contactless state.’”); id. ¶ 127 (Dr. Duckworth’s describing a motivating factor in Honda’s explanation “that this [charging] station passes wireless power to the wireless charging receiving coil through a rear cover glass (similar to that of Kotanagi), using the physics of induced currents and magnetic flux.”); see also Ex. 1052, 45:16–46:2 (Dr. Anthony, on cross-examination and after being asked whether wireless charging is an improvement over wired charging for a consumer watch, responding that “in some instances it could be, and in others it may not be.”). And, as to a reasonable expectation of success, Patent Owner admits that “Petitioner has presented a device configuration in which a wireless charging coil could be provided in Kotanagi’s through hole 22.” PO Resp. 56; see also id. at 3 (Patent Owner arguing that “the size of coil that could be provided in this allegedly available space would be small and would significantly limit the amount of wireless power signal transmission,” but not arguing that even Patent Owner’s purported size-limited configuration would be inoperative); see, e.g., Ex. 1003 ¶¶ 130–133 (Dr. Duckworth credibly testifying that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Kotanagi and Honda).” slip op. at 31

  Patent outcomesUS 10,627,783 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,627,783
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · Jul 8, 2024 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–5, 7, 9, 12–14, and 17–19 are unpatentable: Amano anticipates claims 1, 5, 7, 12, and 17, and Amano with Gorman or Flach renders the remaining claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A Person of Ordinary Skill in the Art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education.” slip op. at 11

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

    “Sur-reply 4–5; Ex. 1017, 73:13–22; Ex. 2013, 23:10–24:25,17 36:19–37:7. It, therefore, seems unnecessary in our view to contemplate claim constructions that substitute “takes into account” or “is adaptive to” for the actual claim language of “based on.” It is apparent from the record that has developed during trial that a core matter for resolution is whether an exertion level that is “based on” a level of a user’s physical fitness includes, at least in some fashion, a user’s physical characteristics or attributes as a part of assessing or understanding a level of a user’s physical fitness. From a general standpoint, it stands to reason that many of a person’s physical attributes, in at least some respect, do indeed provide for assessing the level of that person’s physical fitness. To be sure, we agree with Patent Owner that certain individual attributes, such as any of sex, age, height, weight, and stride length, taken alone cannot necessarily be “equated” with a user’s level of physical fitness or constitute such a level. See, e.g., PO Sur-reply 3 (quoting Ex. 2012, 148:5-149:16). But, the record reasonably suggests that such attributes when considered in conjunction with one another can provide meaningful guidance or basis for assessing the level of a user’s physical fitness. For instance, Petitioner contends that “weight and height as expressed through BMI can estimate body composition” which is a “component of physical fitness.” Pet. Reply 2. Petitioner’s declarant, Dr. Lynch, testifies that body” slip op. at 15

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

    “those here including stride length and body weight, may be factored in as a part of an assessment of a person’s level of physical fitness. Although any one particular physical characteristic of a person may not be indicative of the person’s physical fitness, Amano provides that the interrelationship of at least a person’s stride length, initial pitch, and weight are associated with one another so as to establish that particular person’s exercise intensity. Amano also recognizes that there is a relationship between a person’s exercise intensity and heartbeat rate. See, e.g., Ex. 1005, Fig. 4, 4:6–7 (FIG. 4 is a diagram showing the relationship between exercise intensity and heartbeat rate.”). Patent Owner agrees that heart rate may factor into determining a person’s level of physical fitness. See, e.g., PO Sur-reply 4 (“The specification explains that ‘heart rate’ and ‘breathing’ can be used to determine a user’s physical fitness.”). Amano’s teachings in employing a person’s particular physical characteristics, e.g., stride length and body weight, alongside a person’s pitch, i.e., steps per minute, in the process of determining exercise intensity, which is related to heartbeat rate, in our view, reasonably form a basis for assessment of a level of a person’s physical fitness. See, e.g., Ex. 1002, 12:15–20.” slip op. at 28

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

    “teach what Petitioner contends they teach. Rather, the core dispute that emerges between the parties is whether those teachings that are applied to wireless devices would also be applicable to wired devices. At the outset, we note that neither the Specification nor the claims of the ’413 patent provides restriction as to any type of communication approach, i.e., wireless or wired communication, or that there is some type of fundamental distinction between those communication approaches that precludes combining aspects of one with the other. Indeed, as Petitioner notes, the ’413 patent recognizes that wireless interfaces are “alternative[s]” for wired interfaces. Pet. Reply 22 (citing Ex. 1001, 5:27–32). And, Petitioner points out that the relevant dependent claims are not limited to wireless communication. Id. Patent Owner’s assertion that wired communication versus wireless communication imposes some type of insurmountable obstacle to one of ordinary skill in the art in combining the teachings of the references is not adequately, if at all, tethered to the record at hand. Indeed, Amano, itself, presents iterations of its device that employ both wired technology (see, e.g., Ex. 1002, Figs. 5, 16, 30, 40) and also wireless technology (see, e.g., id. at Fig. 44). Patent Owner argues that implementing aspects of Gorman and Flach’s wireless devices onto Amano’s wired device “would have required complete redesigns and new components.” PO Resp. 42 (citing Ex. 2008 ¶¶77–78, 81–82) Given the recognition in the art, such as Amano, that a workout device may include either wired or wireless components, it is difficult to reach the conclusion that “complete redesign” would be necessary. Nevertheless, that there may be some design considerations, or even challenges, that a skilled artisan may face in combining those two types of communication technology, does not end the obviousness inquiry. The parties agree that a person of ordinary skill in the art has significant engineering and design experience in connection with wearable workout devices. See Pet. 18, PO Resp. 16. Neither Patent Owner nor Dr. Bergeron adequately explains why any design challenges in combining aspects a wired workout device with a wireless workout device would have been beyond the skill or ordinarily skilled artisan, so as to preclude a determination of obviousness. See KSR, 550 U.S. at 417 (“if 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 44

  Patent outcomesUS 8,620,413 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,620,413
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · Jun 26, 2024 · IPR2023-00424 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–10 and 12–19 are unpatentable: claims 1–8, 10, 12–17, and 19 as anticipated or obvious over Acres, and claims 9 and 18 as obvious over Acres and Pyles.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner indicates that “[f]or purposes of this Response, Nike applies lululemon’s proposed level of skill in the art.” PO Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior 9 Person of ordinary skill in the art. art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “Considering the discussion above, we conclude that the meaning of “data” previously offered by Patent Owner as “factual information, from 10 [JUDGE]: Counsel, let me borrow my colleague’s question. Maybe I’m belaboring this, but in your view, information that is sensed or collected or factual information that is sensed or collected, that’s effectively the same thing; and this case does not distinguish between factual information in that context and just information? [COUNSEL FOR PATENT OWER]: Yes. That’s correct, Your Honor. which decisions and subsequent actions can be made” finds support in the record, and also is in accord with the meaning of “data” as “information” that is offered by Petitioner (see, e.g., Pet. Reply 2).11 Accordingly, we adopt the meaning of “data” that Patent Owner offered in its Preliminary Response as “factual information, from which decisions and subsequent actions can be made.” See Prelim Resp. 18. In doing so, we reiterate and restate our view from the Institution Decision that the record does not lend itself to a conclusion that such a meaning of “data” is so restrictive as to convey that any instructions, commands, or signals are “entirely devoid of content recognized as ‘factual information’ so as to be beyond the contours of what a skilled artisan would regard as ‘data.’” See Inst. Dec. 9.” slip op. at 15

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

    “Thus, Acres discloses that, based upon an exerciser’s heart rate, Bug 601 operates to send or transmit commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Petitioner contends that “Acres’s Bug and its associated sensors are together a sensor device.” See, e.g., Pet. 9–10. Patent Owner does not dispute that contention. Patent Owner’s dispute arises from its position that Acres’s transmitted commands do not amount to the claimed “first set of data.” See PO Resp. 21–25; PO Sur-reply 10–14. That dispute is premised on Patent Owner’s proposed claim construction, which requires that the claimed “data” be only information that is sensed or collected in some other specific way by a sensor. As discussed above in our Claim Construction section (§ II.C.1), however, we do not agree that the record substantiates such a narrow meaning for the term “data.” It is difficult to conclude that a command that is generated based on a user’s heart rate that operates to control the functionality of a piece of workout equipment is not readily viewed as “factual information, from which decisions or subsequent actions can be made,” which, as discussed above, is a meaning of “data” that reasonably emerges to one of ordinary skill in the art based on record evidence.12 In its Sur-reply, Patent Owner also briefly states that Acres does not show that “decisions or subsequent actions can be made” from “data.” PO Sur-reply 12–13. It is apparent, however, that Patent Owner does not dispute that decisions or subsequent actions may be made based on the commands transmitted from Acres’s Bug. Id. at 13 (“lululemon has only established that Acres teaches that decisions or subsequent actions are made based on commands transmitted from the Bug.”). Indeed, no dispute is credible because, as noted above, Acres clearly describes the commands the Bug sends operate to control operation of workout equipment, such as increasing its speed. See Ex. 1002 ¶ 89. Rather, Patent Owner simply parallels its prior arguments that a deficiency arises because, in Patent 12 We again note that “factual information, from which decisions or subsequent actions can be made” was the meaning of “data” advocated by Patent Owner as a part of its Preliminary Response. See Prelim. Resp. 18. Owner’s view, the commands do not encompass “data.” As discussed above, we do not agree with that contention. Patent Owner does not contend that any other feature of independent” slip op. at 24

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

    “agree with Patent Owner (see, e.g., PO Resp. 27–28; PO Sur-reply 14–17), but rather agree with Petitioner (see, e.g., Pet. 29–31; Pet. Reply 19–21). The record does not demonstrate that there is some type of fundamental dichotomy between local data storage of activity at a piece of workout equipment and remote, central data storage of such activity that prohibits or precludes combining teachings directed to each approach. Rather, the record readily conveys that each type of data storage approach was recognized as known and viable. Even if there may have been some disadvantages with one or both approaches, the obviousness inquiry does not somehow mandate that a combination of teachings must result in something that is free of imperfection. As suggested by Petitioner, a skilled artisan readily would have recognized some benefits accrue to the local data storage approach advocated by Pyles. Even if there may have been some disadvantages to that approach, that does not nullify appreciation of the benefits that may offset such disadvantages. See, e.g., Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“[t]he fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another”). Indeed, as argued by Petitioner, and as attested to by Dr. Houh, the record reasonably establishes that a skilled artisan would have evaluated potential benefits and detriments as part of various data storage approaches in the area of workout equipment in assessing obviousness. See, e.g., Pet. 29–31; Pet. Reply 19–21; Ex. 1005 ¶¶ 68–73; Ex. 1015 ¶ 31. The obviousness inquiry demands as much. Patent Owner’s declarant, Dr. McLean, postulates, without record citation, that some detriments may possibly arise in implementing data storage at an exercise machine, as in Pyles, in lieu of central site storage as in Acres. See, e.g., Ex. 2004 ¶¶ 64–68. Yet, even if such less-than-desirable characteristics may result, neither Dr. McLean nor Patent Owner offers any cogent explanation as to why recognition of those characteristics undermines a determination of obviousness. In particular, Dr. McLean does not dispute that local storage would have the benefits discussed by Dr. Houh (a simplified, less expensive structure with a reduced number of components, which do not need to be connected to the internet), albeit along with the disadvantages discussed by Dr. McLean. Indeed, Dr. McLean and Patent Owner do not explain why a skilled artisan would not reasonably have evaluated any detriments alongside the potential benefits as a part of the obviousness inquiry. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). That test does not objectively fail if a skilled artisan would have recognized some disadvantages in combining the prior art teachings. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”).” slip op. at 33

  Patent outcomesUS 10,923,225 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,923,225

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.