- Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 8,886,753 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,753 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCAll claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00943 · APJ Scott B Howard · IPR · Final written decision
Claims 2–23, 26, 41–60, 63, 64, 91–152, and 155–171 are unpatentable; Rao anticipates some claims, and the stated Rao combinations render the remaining claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have at least a bachelor’s degree in computer science, computer engineering, or a similar field, and approximately two years of industry or academic experience in a field related to computer software development and/or computer networking.” Pet. 2 (citing Ex. 1015 ¶¶ 50–52). Petitioner further argues that “[w]ork experience can substitute for education, and additional education can substitute for work experience.” Id. at 2–3 (citing Ex. 1015 ¶¶ 50–52). Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’541 patent and not disputed by Patent Owner (see PO Resp.), we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. Patent Owner does not propose any claim constructions. See PO Resp. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence that claim 3 was anticipated by Rao.” slip op. at 25
Patent outcomesUS 8,589,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCAll claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00942 · APJ Scott B Howard · IPR · Final written decision
Claims 2–23, 26, 41–60, 63, 64, 91–152, and 155–171 are unpatentable; Rao anticipates some claims, and Rao-based combinations render the others obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have at least a bachelor’s degree in computer science, computer engineering, or a similar field, and approximately two years of industry or academic experience in a field related to computer software development and/or computer networking.” Pet. 2 (citing Ex. 1015 ¶¶ 50–52). Petitioner further argues that “[w]ork experience can substitute for education, and additional education can substitute for work experience.” Id. at 2–3 (citing Ex. 1015 ¶¶ 50–52). Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’541 patent and not disputed by Patent Owner (see PO Resp.), we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states “[n]o terms require construction to resolve this Petition.” Pet. 3. Patent Owner does not propose any claim constructions. See PO Resp. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Expert testimonyOther
“157, and 171 are anticipated by Rao. Pet. 1, 19–39, 42. Petitioner’s arguments are supported by citations to the prior art and the testimony of Dr. Wolfe. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“anticipated by Rao. Pet. 1, 30–31, 33–42. We have reviewed Petitioner’s arguments for each of those dependent claims. See Pet. 30–31, 33–42. For each of those dependent claims, the Petition appears to only argue a theory of obvious. That is, the Petition never states that the additional limitation is disclosed by Rao. See id. For example, claim 26 depends from claim 1 and further recites “wherein the policy is based on a background service class.” Ex. 1001, 112:49–52. We reproduce Petitioner’s arguments directed to claim 26 below: Rao’s policies 520 may “define prioritization” for network packets “based on whether an application is running in the foreground or the background.” [Ex. 1002] ¶ 182; id. ¶¶ 38–43, 180, 182, 188–89, 193, Figs. 5A, 5B. Each packet “may be placed and arranged in a priority order respective to all other . . . packets to provide a packet by packet prioritization across all applications 338a-338n and . . . network packets.” Id. ¶ 191. It would have been obvious to determine and apply a policy assigning a specific priority to packets associated with background applications, supra [1e]-[1f], and Rao thus discloses or renders obvious assigning a priority to network communications based on whether they are characterized as background services (class of services associated with application(s) running in the background of client 105), EX-1015 ¶¶195-96; supra [1e], [1f]. Pet. 33–34. Although the Petition sets forth why the claim limitation would have been obvious, there is no discussion as to how the additional limitation of claim 26—policy based on background class—is disclosed in Rao. See id. Similar arguments are presented for the other claims. See Pet. 30–31, 35–42. Because the Petition does not sufficiently show how the additional limitations recited in claims 20, 26, 58, 64, 165, and 169 were disclosed by Rao, Petitioner has not shown by a preponderance of the evidence that claims 20, 26, 58, 64, 165, and 169 were anticipated by Rao.” slip op. at 28
Patent outcomesUS 8,589,541 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentablePTAB · Sep 5, 2025 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1, 3, and 4 are unpatentable as obvious over Afshary and Mirfakhraei; claim 2 was not shown unpatentable over either asserted combination.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” is too narrow. Although Patent Owner points to various parts of the ’518 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses twisted pair wiring and satellite communications as media that can be used. See, e.g., Ex. 1001, 1:27–29, 3:33–35, 3:49–50, 3:67–4:3, 5:61–6:3, 8:20–23, 9:28–33. Accordingly, we adopt the following level of ordinary skill in the art for use in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to four years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find that this skill level is consistent with the problems and solutions identified in the ’518 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 15
- Expert testimonyDecided for petitioner
“We determine that Mr. Bertonis and Mr. Garrett had at least the skill level of a POSITA at the time they submitted their declarations and testimony in this case. Ex. 1002 ¶¶ 4–15, Appx. A; Ex. 2001 ¶¶ 8–12, Appx. A; cf Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335 1341 (Fed. Cir. 2024) (“An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art.”). Accordingly, we see no reason to disregard the testimony of either on the basis that they do not have a POSITA’s skill level.” slip op. at 45
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Because an assessment of whether the prior art discloses a means- plus-function limitation depends not only on the presence of the recited function but also the structure that performs that function as described in the patent’s specification, we address Petitioner’s undisputed contentions for the means-plus-function limitations below.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We conclude that Petitioner has shown by preponderant evidence that Mirfakhraei is in the same field of endeavor as the ’518 patent, i.e., “broadband communication networks.” Mirfakhraei is thus analogous art because it is in the same field of endeavor as the ’518 patent.” slip op. at 27
Patent outcomesUS 7,295,518 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,295,518 - PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision
Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26
Patent outcomesUS 9,427,662 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - PTAB · Feb 5, 2025 · IPR2024-00921 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–15, 17–21, and 39 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25–26 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. at 26 (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Spatial Coding Petitioner argues that “spatial coding” means “coding in the spatial domain.” Pet. 28. According to Petitioner, the specification of the ’991 patent “describes spatial coding as the coding (e.g., quantizing and entropy coding) of pixel values in the spatial domain ‘without transform,’ but without limiting it to a particular algorithm or technique.” Id. (citing Ex. 1001, 5:6–23, Fig. 4). “Patent Owner does not contest Petitioner’s construction for the sake of this [Patent Owner Preliminary Response], but reserves the right to challenge this construction in the event of institution.” Prelim. Resp. 21. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“3. “The Difference Signal” (Claims 13 and 14). Petitioner argues that claims 13 and 14 “contain a drafting error that recites ‘the difference signal,’ without antecedent basis.” Pet. 29. According to Petitioner, a person having ordinary skill in the art “would have understood ‘the difference signal’ in these claims to mean ‘a difference signal representing differences between sample values of a predicted block of data and values for an original input block’ as recited in limitation [1a] of claim 1.” Id. For purposes of its Preliminary Response, Patent Owner “agree[d] with Petitioner’s construction of ‘the difference signal’ in Claims 13 and 14.” Prelim. Resp. 24. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - PNC Bank, N.A. v. United Services Automobile AssociationAll claims unpatentablePTAB · Jan 19, 2023 · IPR2021-01070 · APJ David C Mckone · IPR · Final written decision
Claims 1, 2, 7–10, and 15–17 are unpatentable as obvious over Acharya and Luo.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Skill in the Art Relying on Dr. Mowry’s testimony, Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field, and at least two years of prior experience with image processing or scanning 8 The record does not include allegations or evidence of objective indicia of nonobviousness. server,” and that “[a] person with additional education or additional industrial experience could still be of ordinary skill in the art if that additional aspect compensates for a deficit in one of the other aspects of the requirements stated above.” Pet. 19–20 (citing Ex. 1002 ¶ 44). We adopted this level of skill in the Institution Decision. Dec. 38–39. Patent Owner applies this level of skill in its Patent Owner Response. PO Resp. 30. As Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art, we continue to apply this level of skill.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Dr. Mowry testifies that, “[g]iven these difficulties in using handheld devices to capture suitable images, a person of ordinary skill in the art would have been motivated to implement Acharya using the reference lines and capture techniques described in Luo in order to achieve a high likelihood of obtaining images that were suitable for image processing.” Ex. 1002 ¶ 63. According to Dr. Mowry, Luo’s solution is “directly applicable to capturing check images to predictably increase the likelihood of obtaining images that are suitable for” optical character recognition. Id. Dr. Mowry’s testimony is consistent with the express disclosures in Acharya and Luo and, therefore, is credible. Acharya expressly identifies technology that it uses to capture information from documents, namely optical character recognition, and Luo expressly describes a technique designed to reduce projective distortion when capturing an image of a document, such that optical character recognition can be performed more accurately. Dr. Creusere admitted on cross-examination that “correcting geometric distortion will make it easier to perform automatic text recognition.” Ex. 1037, 89:1–2. Petitioner contends that its proposed combination would have amounted to applying a known technique to a known device ready for improvement to yield predictable results. Pet. 32–34; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 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.”); Ex. 1002 ¶ 64 (“Implementing Acharya’s RCT using Luo’s camera system would have simply involved applying a technique that was known to a device that was known and ready for improvement, to yield predictable results.”). We agree. This appears to be a textbook example of using a technique that improved one device to improve a similar device in the same way. As we preliminarily observed in the Institution Decision (Dec. 54), a combination of Acharya and Luo would have been no more than “[t]he combination of familiar elements according to known methods” and, thus, likely obvious because it “does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. Gurley, 27 F.3d at 553.” slip op. at 43
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Acharya’s system would have imposed “additional processing overhead and complexity on the customer’s device as compared to the existing manual capture system” and that “[t]his type of processing, especially when done in real-time, was considered computationally-intensive in 2009.” PO Resp. 53 (citing Ex. 2115 ¶ 35). The only evidence Patent Owner offers to support this assertion is the testimony of its expert, who largely copies Patent Owner’s argument and does not identify the basis for the testimony. As such, the testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). We note that Luo describes its technique as implemented on conventional computing equipment on portable devices available prior to 2009 without mention of concerns over processing overhead. Ex. 1004, 8. Patent Owner’s evidence is insufficient to establish that concerns over processing overhead would have dissuaded a skilled artisan from pursuing a combination of Acharya and Luo.” slip op. at 44
Patent outcomesUS 8,699,779 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,699,779 - Google LLC v. Neonode Smartphone LLCNo claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01041 · APJ Christopher L Ogden · IPR · Final written decision
Google did not show claims 1–7, 9, 12, 13, and 15–17 unpatentable because the asserted combinations did not teach or suggest the claimed multi-step activation involving gliding away.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“For Google, Dr. Wobbrock testifies that a person of ordinary skill in the art at the time of the invention, would have had “at least a bachelor’s degree in Computer Science, Human-Computer Interaction, Symbolic Systems, or related engineering disciplines, and at least two years of experience designing and programming graphical user interfaces,” but that “[r]elevant work experience can substitute for formal education and advanced degree studies could substitute for work experience.” Ex. 1003 ¶ 49. Testifying for Neonode, Dr. Rosenberg states that for his declaration, he “will apply the same definition of the level of skill of a [person of ordinary skill in the art]” as Dr. Wobbrock. Ex. 2019 ¶ 27. We find Dr. Wobbrock’s uncontested articulation to be reasonable in light of the subject matter involved in the ’879 patent and the asserted prior art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses technical problems including “to provide a user-friendly interface . . . on a small handheld computer unit”). Thus, we adopt it for our decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Google does not propose any explicit claim constructions in its Petition. See Pet. 4. Neonode does not propose any explicit constructions either, but in its Response, Neonode raises a number of claim construction arguments regarding the term gliding . . . away as it appears in limitation 1c, to which Google responds in its Reply. See PO Resp. 31–50, 66–69; Pet. Reply 7–12, 19–21; see also PO Sur-reply 1–10, 19–21. We do not need to construe this term explicitly for our decision, and to the extent we need to interpret this or any other terms, we address the terms below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find Google’s argument unpersuasive.10 Tarpenning’s assignment operation for hotkey 82 is in the nature of a drag-and-drop operation, where the user drags the pen from hotkey 82 to the intended menu item to which hotkey 82 will be assigned. But Google identifies the “function [to be] activated”—not as the actual assignment of hotkey 82 to the menu item when the user lifts from the intended menu item—but as the underlying software process that looks to see whether the user has lifted yet from the selected menu item. See Pet. Reply 19–20; Tr. 37:17–39:16. Essentially, Google asserts that the recited function is part of processing the gesture itself, which we do not find persuasive. As counsel for Neonode argued at the hearing, unless the user lifts off from a menu item, no assignment to hotkey 82 has been made and nothing has actually been done. See Tr. 80:4– 13. 10 We also consider this argument untimely, as it appears to contradict Google’s original theory of obviousness in the Petition, which states that the “‘assignment’ function” is “completed when the user reaches the target item to be assigned.” Pet. 79; see also Tr. 80:2–3 (counsel for Neonode arguing, “I submit that’s not only a new point they’re making, it’s unsupported and . . . incorrect.”); 37 CFR § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner response[] or decision on institution.”). We also find unpersuasive Google’s original argument in the Petition that the recited “function” is activated when the user reaches the target menu item being assigned to hotkey 82. See Pet. 79. This is essentially a traditional drag-and-drop operation. But we credit Dr. Rosenberg’s testimony that when the user lifts from the intended menu item, no function has actually been activated. See Ex. 2019 ¶ 139. Rather, at this point a function has merely been assigned to the hotkey for future activation by touching the hotkey. See id. Thus, we determine that Google has not identified any disclosure in Tarpenning in which any “function is activated by a multi-step operation” as recited in limitation 1c. Absent that teaching or suggestion, Google’s argument (Pet. 80–82) does not adequately articulate why a person of ordinary skill in the art would have modified Tarpenning’s book menu key 84 or library menu key 86 to achieve limitation 1c, and we find Google’s obviousness argument unpersuasive as to claim 1.” slip op. at 36
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“would have understood Robertson’s “flick” gesture to comprise “gliding . . . away” as we interpret that term. Robertson says very little about the “flick” gestures themselves, other than using the word flick. See, e.g., Ex. 1005, 39. Robertson teaches that its gestures should be “easily differentiated,” and in addition to “flick” gestures, Robertson also teaches “drag and drop” operations. Id. at 36 (“[Y]ou can drag a document icon and drop it into a printer icon to print the document . . . .”). We credit Dr. Rosenberg’s testimony that, for the XButton system to immediately distinguish between dragging and flicking, there must be some distinction between a “flick” and a “drag,” and that the most plausible difference is in terms of their speed, distance, or both. See Ex. 2019 ¶ 90. Although Robertson discloses that its system is capable of recognizing gestures that start on an XButton and extend outside it (see Ex. 1005, 43), a “glide” or that the distinction is arbitrary. Cf. Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1360 (Fed. Cir. 2014) (“Descriptive words . . . are commonly used in patent claims, to ‘avoid[] a strict numerical boundary to the specified parameter.’” (alteration in original) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995))) the only gesture for which Robertson specifically indicates this would be necessary is a “circling gesture[] for grouping, moving, and copying graphical objects” (id. at 39). Thus, we disagree with Google that Robertson’s teaching in this regard is relevant to what Robertson means by a “flick” gesture. We also find persuasive Neonode’s dictionary definitions, spanning from 1993 to 2012, which consistently indicate that the word flick describes a movement that is “light,” “sharp” or “quick,” and “jerky” or “sudden,” as opposed to definitions of “glide” referring to a movement that is “smooth,” “continuous,” and possibly “quiet” or “effortless.” Exs. 2049, 2050, 2052, 2057.9 And although the evidence postdates Robertson, we find relevant the supporting evidence that modern Apple and Google developers maintain a meaningful distinction between “flick” and “swipe” gestures. See Ex. 2022, 4; Ex. 2023, 6; Ex. 2025, 21; Ex. 2026, 5; Ex. 2029, 2; Ex. 2019 ¶¶ 80–81. We further credit Dr. Rosenberg’s opinion that in the relevant time frame, a person of ordinary skill in the art would have interpreted a “flick” gesture as one in which “the pen would touch the screen, but only moves on the screen for a very short distance and is quickly lifted from the screen in a ‘jerky’ motion.” Ex. 2019 ¶¶ 85–86. 9 The earliest dictionary definitions (Ex. 2052) are from 1993, which is roughly contemporary with Robertson (1991), and are sufficiently close in time to be relevant. Google does not present any evidence suggesting that the meaning of flick had changed between 1991 and 1993. See PO Sur-reply 2. Thus, we agree with Neonode that Google has not shown that Robertson’s “flick” gesture comprises “gliding . . . away,” and thus falls within the scope of claim 1. Finally, we also agree with Neonode that Google has not established that Robertson’s “insert” (caret) gesture comprises “gliding . . . away.” Although Robertson does not provide much information about this gesture, we find Dr. Rosenberg’s interpretation and annotated version of Figure 1 (Ex. 2019 ¶¶ 99–102) more credible than those of Dr. Wobbrock (Ex. 1003 ¶ 108). We credit Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood the “insert” gesture to be similar to the way a person would draw a caret to indicate an insertion within existing text. See Ex. 2019 ¶ 99. Thus, we agree it would involve two brief, connected movements with a sharp peak, neither of which would be a continuous gliding or swiping motion. Id. ¶¶ 100–102.” slip op. at 27
Patent outcomesUS 8,095,879 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,095,879 - Solaredge Technologies Ltd. v. Sma Solar Technology AGRehearing grantedPTAB · Oct 25, 2022 · IPR2020-00021 · APJ Scott B Howard · IPR · Rehearing
On rehearing, the Board held claims 1–10 unpatentable as obvious: claims 1–3, 5, and 7 over AAPA and Frezzolini; claims 4, 6, and 8–10 over AAPA, Frezzolini, and Iwamura.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Updated Guidance. See Opp. Reh’g 4–8. Instead, Patent Owner argues that we correctly determined in the Final Written Decision that AAPA was the foundation or starting point of the ground. Id. However, the language that we relied upon from the Guidance Memo in the Final Written Decision has been deleted from the Updated Guidance. Compare Guidance Memo 6 (directing the PTAB to determine if the applicant admitted prior art is the foundation or starting point), with Updated Guidance (language omitted). Although we properly followed the Guidance Memo in the Final Written follow the clear and unambiguous requirements of the Updated Guidance. Moreover, Patent Owner does not direct us to any Federal Circuit case law that suggests using the foundation or starting point test of the Guidance Memo. See Opp. Reh’g 4–8. Although the Qualcomm panel was aware of the Guidance Memo (see 24 F.4th at 1373), the Federal Circuit neither discussed the test set out in the Guidance Memo, nor directed that the PTAB apply the foundation or starting point test. See 24 F.4th 1367.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues—supported by the testimony of Dr. Wood—that a person having ordinary skill in the art (“PHOSITA”) “would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and at least two years of design experience with photovoltaic systems.” Pet. 20 (emphasis added) (citing Ex. 1011 ¶¶ 18– 22). In the Institution Decision, we adopted Petitioner’s description of a person having ordinary skill in the art, “except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 15–16. Patent Owner does not address that determination. See PO Resp. Accordingly, for the reasons given in the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of practical experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and two years of design experience with photovoltaic systems.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that all claim terms should be construed according to their ordinary and customary meaning at the time of the invention. Pet. 20. Patent Owner argues that two terms require explicit constructions: “the power line modem” and “the data signal coupler.” PO Resp. 20–22. Patent Owner’s proposed claim constructions limit the “power line modem” and the “data signal coupler” to DC power lines. PO Resp. 20–22. However, during the Oral Hearing, Patent Owner agreed that, consistent with the plain and ordinary meaning, the other limitations of the claims require that the components operate on DC power lines. Tr. 37:5–23. As discussed in more detail below, Petitioner’s combination of prior art references uses DC power lines. Accordingly, no express construction is needed to resolve any dispute in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for petitioner
“of the background knowledge possessed by a person of ordinary skill in the art.” Guidance Memo 6–7; Updated Guidance 4–5. Although Patent Owner had the opportunity to make such an argument in the Sur-reply when addressing the Guidance Memo (and by implication, the identical language of Updated Guidance), Patent Owner chose not to do so and, accordingly, forfeited the argument. See Paper 9, 7. Although Patent Owner raised the argument at the oral hearing,17 that is not enough to preserve the argument as no new arguments can by made during the Oral Hearing. See CTPG at 85– 86 (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Dell, 818 F.3d at 1301 (“[T]he Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Just as a movant may not make a new argument in a request for rehearing, a party opposing such a request cannot raise new arguments that it did not make before. See Apple Inc. v. Taction Tech., Inc., IPR2022-00057, Paper 15 at 4 (“A request for rehearing is not an opportunity . . . to present new arguments.”) (Denying Request for Rehearing). Accordingly, because Patent Owner did not argue that the limitations taught by the AAPA were not known in the prior art in its Patent Owner Response or Sur-reply, that argument is forfeited and cannot be considered on rehearing.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,922,048 - PTAB · Jul 11, 2022 · IPR2022-00324 · APJ Russell E Cass · IPR · Institution
Instituted IPR of claims 1–7, 9, and 11–16 on all grounds; Samsung showed a reasonable likelihood of proving at least one challenged claim unpatentable, and discretionary denial was unwarranted.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In weighing factor two, we follow the Interim Fintiv Guidance, which directs us to consider “the most recent statistics on median time-to-trial for civil actions in the district court in which the parallel litigation resides,” which is 24.2 months. Interim Fintiv Guidance 8–9. Applying this time period, the expected trial date would be in November 2023, which is several months later than the July 2023 due date for our final written decision in this case. We do not agree with Patent Owner that the median time-to-trial statistics are not relevant here because the parties can only move the trial date upon a showing of “good cause.” See PO Supp. Br. 1 (citing Ex. 2003, 1, 5). We also do not agree that the speculative possibility that the district court might grant summary judgment weighs in favor of exercising discretion to deny institution, particularly because Patent Owner has not provided any reason why summary judgment is likely in this case. See id. at 2. Consequently, we find that this factor weighs against exercising discretion to deny institution.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed
“Based on the present record, Petitioner has sufficiently shown that the preambles of independent claims 1, 11, and 14 are non-limiting. The preamble of claim 1 recites a “headset,” but the “headset” is not referenced in the body of that claim, which appears to recite a structurally complete invention. Similarly, the preambles of claims 11 and 14 recite an “earpiece,” but the body of those claims do not reference the “earpiece” and appear to recite a structurally complete invention. Additionally, the Examiner determined during prosecution that the terms “a headset” and “earpiece” recited in precursors to the independent claims “ha[ve] not been given patentable weight” because “the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause,” and the applicant did not dispute this determination. Ex. 1004, 69, 131. Thus, the preamble terms “headset” and “earpiece” appear to be more akin to the intended use of a structurally complete invention recited in the body of the claim than an “essential element” of the claimed invention that should be given patentable weight. However, we question whether Petitioner has sufficiently shown that the preambles of dependent claims 2, 3, and 16 are non-limiting. Each of these claims refers to the preamble in the body of the claim. For example, claim 2, states that the “event” of claim 1 “is a touching of the headset,” claim 3 states that the processor “triggers the event responsive to detecting an abrupt movement of the headset, or a change in location of the headset.” Similarly, claim 16 states that the “event” of claim 15 “is a touching of the earpiece” or “an abrupt movement of the earpiece.” In Arctic Cat, the Federal Circuit distinguished the non-limiting structural language in the preamble from a situation where preamble language “suppl[ies] ‘antecedent basis’ for terms in the body,” and identified this factor as one of “[t]he rules we have articulated about what preamble language reciting structure is limiting.” Arctic Cat, 191 F.3d at 1329. The parties may further address the issue of whether the preambles of the challenged claims are limiting during the trial.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Other than the preambles, the parties do not propose constructions for any other claim terms. Pet. 17; Prelim. Resp. 15. We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. 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 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,254,591
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.