- Penumbra, Inc. v. Rapidpulse, Inc.No claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted combinations did not teach the claimed predetermined cycle for controlling distal fluid flow.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its PO Response, it “accepts ¶ 44). We adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“specification explicitly includes sensors similar to those in the prior art in support of their argument that the claimed “predetermined cycle” must not exclude the use of such sensors. Pet. Reply 15 (citing Ex. 1001, 32:55–33:7, 40:66–41:5, 44:9–29). We reviewed the portions of the specification cited by Petitioner. We agree with Patent Owner that one excerpt discussing sensor use appears to be directed to triggering the predetermined cycle rather than causing timing changes during the cycle itself (Ex. 1001, 32:55–66) (describing use of a pressure sensor to “determine when the vacuum channel 3 is clogged by a thrombus and automatically perform the unclogging procedures described herein”), while another excerpt discusses a sensor that Petitioner that the ’402 patent discusses the use of sensors to “tune” the system and that such “tuning” can be done statically (setting the cycle timing in advance) or dynamically (adjusting the timing during the cycle itself). See Ex. 1001, 48:19–49:50. Overall, we find that these disclosures involving sensors demonstrate that sensors may be used in various ways in different embodiments. However, none of these disclosures explicitly discuss the use of sensors in conjunction with a “pre-determined cycle.” Therefore, we find that the ’402 patent specification’s discussion of “sensors” are not particularly informative as to the appropriate construction of a “predetermined cycle” and do not outweigh the other explicit disclosures of “predetermined cycle” in the patent. We next turn to the other intrinsic evidence discussed by the parties — the prosecution history. As discussed by Patent Owner, in the Notice of Allowance, the Examiner found that Garrison did not teach or suggest a “predetermined cycle” because Garrison’s controller “changed the cycle of opening and closing the valves based on feedback from sensors.” Ex. 1004, 86. We acknowledge that the patent applicant filed subsequent comments during prosecution in which they stated that they “do[] not concede that the Examiner’s characterizations of the terms of the claims and the prior art are correct.” Id. at 29. However, we agree with Patent Owner that the importance of the Examiner’s statement in the Notice of Allowance does not rely on it being an express disclaimer (a standard which it does not meet). PO Sur-reply 8. We also considered Petitioner’s contention that the Examiner’s interpretation of Garrison may have been in error (PO Resp. 16); however, even if this were true, the Examiner’s statement still provides helpful insight into how the Examiner was interpreting the term sensors to change the opening and closing of valves during a cycle was not a “predetermined cycle.” Id. at 86. In sum, we find that Patent Owner’s proposed construction is consistent with the usage of the term “predetermined cycle” in the ’402 patent specification and prosecution history. Thus, after considering all of the cited evidence, we construe “predetermined cycle” to mean that “the timing of the sequence of valve operations in the cycle is determined beforehand, i.e., fixed, rather than varying based on feedback after operation begins.”” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other Terms The parties also provided proposed constructions for the limitations of “[limited/limiting] to a positive amount of exit flow” and “control[ling] fluid flow in and out from the distal end of the catheter.” See Pet. 15–16; Pet. Reply 1–8; PO Resp. 22–24; PO Sur-Reply 2–6. However, having evaluated the arguments and evidence before us, we determine that construction of these terms is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that neither Petitioner nor Mr. Brown propose any combination of Yang and Mullins that does not include Mullins’s pressure sensor in order “to control fluid flow in and out from the distal end of the catheter.” Indeed, in addressing the “predetermined cycle” limitation, Mr. Brown contends that Mullins discloses a “cycling controller that ‘varies aspiration pressure according to sensed pressure within the catheter lumen.’” Ex.1005 ¶¶ 131–32 (citing, e.g., Ex.1008, 27:40–28:20 (“[a] novel aspect of this pump system is the incorporation of feedback into the pump algorithm in order to produce more effective pressure cycling”)). This use of a sensor to change pressure during a cycle, is not a “predetermined cycle” under our construction. combinations is its discussion of distal end flow control, not for its sensors.” Pet. Reply 17 (citing Ex. 1035 ¶ 83). However, Petitioner’s obviousness grounds rely on the combination of Yang and Mullins, especially with regard to Mullins’s disclosure of “a controller” in order “to control fluid flow in and out.” As discussed above, Mullins relies on the sensor-feedback approach in order to control flow and we find that Petitioner has not presented persuasive evidence of how the combined disclosures of Yang and Mullins would control flow without using Mullins’s sensor feedback approach. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (error to “consider[] … references in less than their entireties, i.e., in disregarding disclosures in [them] … that diverge from and teach away from the invention”). Therefore, we determine that Petitioner has not sufficiently shown that the combination of Yang and Mullins discloses or renders obvious “a controller configured to open and close the vacuum valve and the vent valve in a predetermined cycle to change a level of vacuum at the distal end of the catheter and to control fluid flow in and out from the distal end of the catheter.” Accordingly, having considered the parties’ respective evidence and arguments, we find that Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’402 patent would have been unpatentable as obvious over the combination of Yang and Mullins.” slip op. at 27
Patent outcomesUS 11,406,402 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,406,402 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentablePTAB · Apr 29, 2025 · IPR2024-00696 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–14 were not shown unpatentable under any of four §103 grounds because the cited combinations did not teach the claimed content-dependent first panel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added).” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Patent Owner thus correctly concludes that “[o]ptions region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 53
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based upon our review of the complete record, we credit Dr. Surati’s testimony that the information in Woods’ options region 1020 (i.e., the first content panel as mapped by Petitioner (Pet. 43; Pet. Reply 16–17)), is determined independently of any currently displayed program content, and what is displayed (e.g., the cast of “Heroes” as depicted in Figure 10) is in fact based on the selected program listing, which does not teach or suggest 1.5.1 (nor recitation 1.5.2 “wherein the first content panel is a first type of application panel”). Ex. 2011 ¶ 143. We find persuasive Dr. Surati’s testimony that “a POSITA would readily understand that the information displayed [in Woods’] region 1020 [of Figure 10] is based on the selected program listing (e.g., Heroes 912) made by the user in Figure 9, not the currently-displayed content in media region 1030 of Figure 10.” Id. (emphases added). In support, Dr. Surati further testifies that “[i]n fact, region 1020 of Figure 10 presents information about the selected program listing for Heroes and is not based on the Mercedes advertisement displayed in media region 1030.” Id.; see also id. at ¶ 144 (depicting Ex. 1005, Fig. 10 above paragraph 144) (emphasis added).” slip op. at 37
Patent outcomesUS 9,247,174 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,247,174 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.No claims unpatentablePTAB · Apr 29, 2025 · IPR2024-00352 · APJ St John Courtenay III · IPR · Final written decision
Claims 1–14 were not shown unpatentable because Woods, alone or combined with Istvan and/or Machida, did not teach the claimed content panel based on currently displayed content.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Lippman, Petitioner contends that an ordinarily skilled artisan for the ’174 patent “would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18–20). Patent Owner indicates it “accepts the Petitioner’s definition of the POSITA.” PO Resp. 9–10. Based on the final record before us, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the final record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’174 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in 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
“Accordingly, we find: (1) the temporal “currently” (shown or displayed television content) term recited in steps 1.3 and 1.4.2, and (2) the associated temporal dependency resulting from the antecedent basis requirements of step 1.5.1, weigh strongly in favor of Patent Owner’s claim construction of claim 1 for the disputed step 1.5.1 claim terms “the application panel interface” and “based on” (emphases added). We emphasize that we are not reading a “dependency” from the ’174 patent specification into the claim. Rather, we conclude a temporal antecedent basis under the plain language of the claim for step 1.5.1 and “wherein” clause 1.5.2.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“region[] 1020 [in Woods’ Figure 10] (which Petitioner corresponds to the step 1.5.1 “first content panel” Pet. 43) is not displayed based on the currently-displayed content, even if the displayed content happens to correspond to the selected program listing.” Sur-reply 7 (citing Ex. 1005 ¶ 174; PO Resp. 26–28; Ex. 2011 ¶ 148) (emphasis added). We find Options region 1020 in Woods’ Figure 10 is instead based on user selection as argued by Patent Owner. Sur-reply 7.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“But Patent Owner disagrees: A POSITA would readily understand that the two user operation panels of Machida are for playback/navigation of content presented in the content display area. The operation panels are very distinct from the function options menu 1020 of Woods’ Figure 10 that the Petitioner alleges to be the claimed “first content panel” (when displaying “cast information” for a selected program listing like Heroes) and the claimed “second content panel” (when displaying “detailed information” for the same selected program listing). PO Resp. 67–68 (citing Ex. 1011 ¶ 250). Patent Owner additionally argues that a “POSITA would not modify Woods’ options region 1020 displaying ‘cast information’ with either of Machida’s operational panels for playback of content.” PO Resp. 68. In support, Patent Owner emphasizes that “Woods’ options region 1020 displaying ‘cast information’ does not perform playback of content displayed in media region 1030. Likewise, Woods’ options region 1020 displaying ‘detailed information’ about a selected program listing does not perform playback of content displayed in media region 1030.” PO Resp. proposed combination.” PO Resp. 69 (citing Ex. 2011 ¶ 252). We agree with Patent Owner on this point regarding Petitioner’s proposed combination of Woods and Machida, given that neither of the proposed versions of Woods’ options region 1020 (displaying general “cast information” in Figure 10), nor Woods’ options region 1020 (alternatively displaying “detailed information” about cast member “Milo” (as depicted in Fig. 11) when the “DETAIL INFO” tab is selected by the user in functions menu bar 1010 of Fig. 10), performs playback of content display in media region 1030. See also Ex. 1005, Fig. 11.” slip op. at 52
Patent outcomesUS 9,247,174 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,247,174 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it 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). Our analysis and the end result are the same under either proposed definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36
Patent outcomesUS 10,076,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Sep 11, 2024 · IPR2023-00664 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–24 were not determined unpatentable because the cited combinations failed to teach or suggest the claimed selectable widget functionality and lacked a coherent rationale to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision to Institute, we construed “input that is directed to a portion of” a user interface. Paper 8, at 9; see also Pet. 24–25. Because this interpretation is not necessary for our final determination, we do not repeat it here.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3. Petitioner’s reliance of the testimony of Dr. Rosenberg (see Ex. 1003 ¶ 91) is unpersuasive because Dr. Rosenberg merely restates the Petitioner’s assertions without reliance on persuasive evidence of record. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, at 5 (Feb 10, 2023) (Vidal, Dir.) (“[T]he Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support and repeated, verbatim, Petitioner’s conclusory arguments.”). When addressing Chae’s three graphics in Figure 6(b) during cross-examination, Dr. Rosenberg testifies that “[t]hey’re not a numbered element, so they’re not spoken about specifically those three ones”). Ex. 2005, 56:9–14, 54:21–22 (“Chae doesn’t talk about the weather icon”). Further, the final record does not support Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood that “part of the well-known functionality of widgets was that selecting a widget would cause ‘display of an application corresponding to the respective user interface object.’” Ex. 1003 ¶ 91. None of the references relied upon by Petitioner discloses this alleged “well-known functionality of widgets,” nor does the evidence of record support any industry standard usage of the term widget in the appropriate timeframe. See Ex. 2003 ¶¶ 46–48. Petitioner has also not persuasively shown that selections of Chae’s SIM card icons result in the display of an application as claimed. See Ex. 1005 ¶¶ 152–154, Fig. 22; see also Tr. 43:14–17 (“the claimed interface object causes display of the corresponding application, but selection of this paragraph 152, Figure 22 widget causes selection of something different, a sim environment.”). We find Patent Owner’s position more persuasive, when Chae uses the word widget, it is not using that word to refer to something that launches into an application, but instead Chae’s widgets show use-state information related to a SIM environment. See Ex. 1005 ¶¶ 152–154; Tr. 33:3–12. Specifically, Chae discloses “widgets that show use-state information of the first and second SIMs (SIM1 and SIM2),” and “when a user selects one of [the] widgets,” it “unlocks the SIM corresponding to the dragged widget.” Ex. 1005 ¶¶ 152, 153, Fig. 3 (unlocking SIM displays home screen customized to unlocked SIM). Chae does not support that these widgets relate to the graphic items in its Figure 6(b), nor does Chae explain how its widgets could be understood as the claimed “user interface objects” of the widget screen user interface. As explained persuasively by Dr. Cockburn, “the only widgets that are described in Chae are widgets relating to the use state of the multiple SIM cards,” and “[t]hese widgets described in Chae do not correspond to applications and thus do not cause display of applications when the widgets are selected.” Ex. 2003 ¶ 46 (quoting Ex. 1005 ¶ 152).” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the final record before us, we conclude that Petitioner has not persuasively shown that the combination of prior art teaches the required widget limitation of “a respective user interface object . . . when selected, causes display of an application corresponding to the respective user interface object” as recited in claim 1. Petitioner relies on Chae’s Figure 6(b), which is reproduced below: Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3.” slip op. at 24
Patent outcomesUS 11,106,352 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,106,352 - Apple Inc. v. Masimo CorporationNo claims unpatentablePTAB · Apr 12, 2022 · IPR2020-01524 · APJ Robert L Kinder · IPR · Final written decision
The Board held claims 1–16 not unpatentable because Petitioner failed to prove obviousness over the asserted Richardson-based grounds, including the required distinct, nonzero duty cycles.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the final record, we find Patent Owner’s proposed interpretation of “duty cycle” persuasive. The evidence cited supports “duty cycle” to mean “the ratio of operating time (or on time) of a light source to the total time period during which the light source is intermittently operated, expressed as a percentage.” See Ex. 2002 ¶ 36 (relying on an electronics dictionary and testifying as to how the ’776 patent uses “duty cycle” consistent with its plain and ordinary meaning to require a ratio of operating time to total elapsed time). We are persuaded by the Specification of the ’776 patent describing the “duty cycle” as the ratio of the operating time (or on time) of the red and infrared LEDs to the total time period during which the LEDs are intermittently operated, expressed as a percentage. See Ex. 1001, 2:43–44; Ex. 2004, 225; Ex. 2002 ¶¶ 37, 39. The duty cycle is described as consistently being “in the range of about 3.125% to about 25%.” Ex. 1001, 2:43–44, Figs. 5, 8. The weight of the evidence, including the claim language and Specification, convinces us that neither the first nor the second duty cycles can be 0%. The claims require the first and second control protocol light sources to generate light so that the patient monitor can calculate a pulse rate based on the light. See Ex. 1001, 11:45–12:21 (“when operating according to the first control protocol, calculating . . . measurement values of the pulse rate, . . . responsive to light from the first control protocol light source” and “calculating the measurement values of the pulse rate, . . . responsive to light from the second control protocol light source”); Ex. 2002 ¶¶ 41, 42. The first and second duty cycles cannot be 0% because the light sources of the first and second control protocol light source would not generate light to enable pulse rate calculation as required by the claims. See Ex. 2002 ¶ 42 (“[I]f the first control protocol light source had a duty cycle of 0%, the light source would be inactive and would not generate light. If the light source did not generate light the monitor could not calculate the ‘measurement” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner identifies the appropriate level of skill in the art as that possessed by a person having “a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies.” Pet. 6 (citing Ex. 1003 ¶ 32 (“someone with a working knowledge of physiological monitoring technologies”)). “Alternatively, the person could have also had a 1 Neither party has introduced objective evidence of non-obviousness. See Tr. 23:25–24:3. Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline.” Id. Patent Owner makes several observations regarding Petitioner’s identified level of skill in the art but, “for this proceeding, [Patent Owner] applies the asserted level of skill identified in the Petition.” PO Resp. 11– 12. We adopt Petitioner’s assessment as set forth above, which appears consistent with the level of skill reflected in the Specification and prior art.” slip op. at 22
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“generated by the source is adjusted to optimize the signal to noise ratio and to minimize power consumption.” Ex. 1006, 11:54–57; Pet. 46, 49, 50. Turcott conveys that this “can be done by adjusting the drive current, the frequency of the pulse train, the pulse duration, or the duty cycle of the pulse train.” Ex. 1006, 11:57–59. Dr. Anthony contends that Turcott describes shifting the frequency of the pulse train and adjusting the duty cycle from one duty cycle to another, and infers that these things could be done during normal operation of the device to reduce power consumption. See, e.g., Ex. 1003 ¶¶ 81, 82, 87. We do not agree that Turcott teaches shifting the frequency of the pulse train or adjusting the duty cycle during normal operation of the device as alleged by Petitioner. We have considered Dr. Anthony’s testimony as to these points, but we determine that the scope of Turcott’s teachings are better explained by Dr. Madisetti. We find more persuasive Dr. Madisetti’s testimony and reasoning that a person of ordinary skill in the art would have understood that Turcott’s adjustments would happen during device design or setup, and not during operation of the device. Ex. 2002 ¶¶ 101–105. This is so because Turcott discloses operating at a single, low duty cycle that minimizes power consumption. See Ex. 2002 ¶ 104; Ex. 1006, 11:51–52 (“To conserve energy, the source is preferably driven with a low duty cycle pulse train.”). We also find persuasive Dr. Madisetti’s cross-examination testimony that the use of the terminology “optical power generated by the source is adjusted” in Turcott, “refers and describes to a POSA that it’s adjusted, past tense, at design time or manufacturing or setup,” and that “Turcott refers to this adjusted in past tense through the term ‘adjusting’ referring to that time at manufacturing or setup.” Ex. 1038, 22:16–24:15.” slip op. at 43
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As we determined above, the claimed first and second duty cycles cannot be 0%. This determination precludes Petitioner’s first mapping of Richardson from reading on claims 1 and 11. Petitioner identifies the first mapping of Richardson as the transition of Richardson’s oximeter from State 2 to State 1. Pet. 10 (“For this first mapping of Richardson . . . the claim elements . . . are mapped to disclosure in Richardson describing the oximeter transitioning from State 2 (as the first control protocol) to State 1 (as the second control protocol).”). Petitioner argues that State 2 (blue below) is the “first control protocol” and State 1 (orange below) is the “second control protocol” required by claims 1 and 11. Patent Owner’s annotated Figure 2 of Richardson (Ex. 1004) describes implementing the noise reduction methods in a pulse oximeter having three states, including State 1 (highlighted in orange) and State 2 (highlighted in blue). PO Resp. 33. Richardson’s pulse oximeter transitions from State 1 to State 2 “[e]very 30 seconds,” and “[t]he purpose of State 2 is to detect new noise sources that may have appeared since the last State 0 measurements.” Ex. 1004, 9:39–42. In State 2, the oximeter reassesses the noise “by turning off one LED; typically the red LED,” for about 1.4 seconds. Id. at 6:2–3, 9:52–53. When the 1.4 seconds (i.e., idle time) expires, the oximeter automatically returns to State 1 where it uses the newly estimated noise values. Id. at 9:63–65; see also id. at 9:66–10:5 (discussing idle time). When operating in State 1, the oximeter has both LEDs turned on. Id. at 5:55–67. Petitioner argues that the red LED “has a duty cycle of 0%” in State 2 and a duty cycle of “at least 25%” in State 1. Pet. 16. Petitioner admits that in State 2 “the red light source is turned off.” Id. As we determined in the claim construction analysis, a person of ordinary skill in the art would have understood that the “first duty cycle” cannot be 0% based on the claims and Specification. Thus, under the proper construction of “first duty cycle,” turning off the red LED in State 2 (Petitioner’s “first control protocol”) is not operating according to a “first duty cycle” as required by claims 1 and 11. Ex. 2002 ¶ 66.” slip op. at 28
Patent outcomesUS 10,433,776 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,433,776 - Apple Inc. v. Masimo CorporationNo claims unpatentablePTAB · Apr 11, 2022 · IPR2020-01523 · APJ Josiah C Cocks · IPR · Final written decision
Apple did not prove claims 1–7, 9–18, and 20–24 unpatentable; the asserted obviousness grounds failed to establish the claimed power reduction or the required light detector-derived processing characteristics.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In our view, Patent Owner has the better explanation for what a person of ordinary skill in the art would understand from the ’703 patent as to what constitutes the “processing characteristics” that factor into the patient monitoring described by the claims. In that respect, we agree with Patent Owner’s above-noted assessments of the requirements of claims 4 and 8. Patent Owner persuasively explains that claim 4 does not emerge as meaningless based on Patent Owner’s construction of “processing characteristics” but instead claim 4 further refines the understanding of the type of processing characteristics that are received from the light detectors, i.e., signal characteristics rather than physiological measurements. We also share Patent Owner’s view that the understanding of claim 8 taken in the context of the Specification (e.g., Fig. 4), establishes that the estimate of power consumption is determined based on signals from light detector 490. We agree that Petitioner’s views as to how claims 4 and 8 inform the meaning of “processing characteristics” lack support and fall short. We conclude that it is inconsistent with the ’703 patent to tease out the sweeping premise advanced by Petitioner that simply any information that is processed, regardless of its source, can constitute the “processing characteristics” that are employed as a part of all of the challenged claims to monitor a patient based on light signals. Rather, we rely on the written description of the ’703 patent as a useful guide in informing the meaning of “processing characteristics,” and conclude that the proper understanding of the term is that such characteristics are derived from signals from light detectors. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”). Accordingly, we conclude that, in the context of the ’703 patent, “processing characteristics” are determined from a signal received from one or more detectors configured to detect light.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Other Claim Terms Upon consideration of the entirety of the arguments and evidence presented, we conclude no further explicit construction of any claim term is needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer its own assessment of the level of ordinary skill. Patent Owner, however, does level a measure of criticism of Petitioner’s assessment of the level of skill in the art as being inconsistent with Petitioner’s own declarant, Dr. Anthony, in not accounting for experience in “non-invasive optical biosensors.” PO Resp. 16–17. Nevertheless, Patent Owner expresses that it “applies the asserted level of skill identified in the Petition.” Id. at 17 (citing Ex. 2001 ¶ 22). We determine that the Petitioner’s expressed level of ordinary skill in the art is consistent with the ’703 patent and the prior art of record. Accordingly, we adopt it in this Decision.” slip op. at 16
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Petitioner’s view that suspending Diab’s motion artifact suppression module necessarily will result in reduced power consumption. Although Amano does describe that its particular system enjoys reduced power consumption when its body movement component eliminating section 30 is suspended (Ex. 1004, 21:65–22:6), Patent Owner presents plausible reasoning and evidence that such power reduction may not occur in Diab’s differently structured and configured system. As between the conflicting testimony of Dr. Anthony and Dr. Madisetti on this matter, we find more credible the testimony of Dr. Madisetti in explaining why the same power consumption reduction attributed in Amano may not occur in Diab’s differently structured system. See, e.g., Ex. 2001 ¶¶ 76–77, 87–90. Yet, the premise of supposed power reduction is the foundational reason that Petitioner advances in combining the teachings of Amano with Diab. We conclude that Petitioner has not met its burden of persuasion on this issue. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 31
Patent outcomesUS 8,457,703 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,457,703 - Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentablePTAB · Apr 2, 2019 · IPR2017-02143 · APJ Robert L Kinder · IPR · Final written decision
Petitioner did not prove claims 1–11 and 13–20 unpatentable on the asserted grounds; claim 12 was disclaimed.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the summon mode, pressing a button to summon the caddie of the ’388 patent triggers an autonomous mode but no specific driving commands are provided to the caddie by the golfer. See Ex. 2015 ¶ 195 (“As the robotic caddy cart is operating autonomously at that point, the user does not input these movement commands.”). We agree that the summon command could not be considered a driver command because “merely defining the destination does not generate any control actions.” Id. ¶ 160. Likewise, a summon command to follow a golfer would not be a driver command because the golfer has no direct control over the route taken, the speed of the caddie, or whether or not a caddie could drive into a restricted area –– the caddie’s system pilots itself to a point near the golfer by generating movement inputs on its own. The system detects that the golfer is in a limited access area and the golfer will not be able to summon the caddie into that area. This restriction is not a driver command being limited because the summon command simply activates internal logic to move the caddie near the golfer, not a driver command to move into a restricted area. Indeed, when operating in autonomous mode, the caddie can never enter such restricted areas. We thus agree with Patent Owner that the summon command cannot be overridden or limited in the ’388 patent because the caddie will always come as close as is allowable under the parameters of the caddie’s programming.” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Dec. 11. First, we note that the claim language itself focuses on limiting the ability of a “driver” to move the cart. For example, dependent claim 2 recites “an override of a driver input to the motor.” That the “driver input” needs to be overridden or otherwise restricted presumes that the golf cart is being driven by a person who has independent control of the cart and is susceptible to driving in an unruly manner, in other words, an onboard driver of the cart. This is especially true given the lack of any indication in the claims of remote or autonomous operation of the cart. Numerous other dependent claims include similar references to a driver of the cart, for example, “override of driver input” (claim 3), “driver interface unit” (claim 4), “limits the performance of driver commands” (claim 14), and “driver command” (claim 17).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner overemphasizes the ’053 Application’s use of the terms “golf cart” and “electric vehicle.” Nowhere does the ’053 Application support the disclosure of a rideable cart. Rather, it describes a golf cart that, when read in the context of the reference as a whole, is a riderless cart, or more specifically, a “caddie cart.” This is evidenced by the fact that the ’053 Application incorporates by reference a caddie cart, as discussed above, in which the only mechanism for actually operating the cart is a “grip lever,” which Petitioner’s own expert acknowledges is not something found in a rideable cart. See Ex. 2016, 94:16–95:11 (conceding “there is no such thing as a rideable golf cart, in [his] experience or in 2003, that has a grip lever”); see also 54:5–12 (essentially same testimony). Further evidence that the ’053 Application contemplates only a riderless caddie cart is its description of the golf cart as “moving the golf bag to a location that is convenient for the play by the golfer.” Ex. 1003 ¶ 2. Nowhere does it describe the cart as moving a golfer or caddy. Even Petitioner’s expert agrees that, while the ’053 Application “does describe a caddy cart,” it “does not describe putting the person in the seat.” Ex. 2016, 92:18–93:1; 88:11–15. And to the extent Petitioner’s expert qualifies that testimony by saying that the ’053 Application doesn’t exclude the possibility of a riding cart and doesn’t preclude putting a person in the seat, that qualification is irrelevant to our analysis of anticipation, which depends on what a reference actually discloses, not what possibilities it could have disclosed. Petitioner’s assertion is that each of independent claims 1 and 6 is anticipated by the ’053 Application – Petitioner has not put forth an obviousness ground for these claims based on the ’053 Application.” slip op. at 24
- Strike new argumentNew argument disregardedDecided for patent owner
“Alternatively, Petitioner argues that the ’053 Application’s disclosure of a golfer selecting a destination on an LCD display “inherently teaches” the ability of “overriding a driver command.” Pet. 29–30 (citing Ex. 1003 ¶ 37). We disagree. The ability to select a travel destination on an LCD display is not the same as the ability to “override” or “restrict” a previous command to travel to a certain destination. As argued by Patent Owner, “[t]he selection of a point on a map is just that—a selection to travel to a point on the map, not to take a particular route to that point.” PO Resp. 34 (citing Ex. 2015 ¶¶ 150–152). Nowhere does the ’053 Application say that the selected point on the display will be disregarded if it is within a prohibited area. Thus, we are not persuaded by Petitioner’s argument that the ’053 Application inherently teaches the ability to “override” a driver input. Reply 3, 23–24. In its Petition, however, Petitioner deliberately chose not to rely on the ’053 Application’s manned operating mode in arguing those particular limitations. See Pet. 28–29 (referencing repeatedly “unmanned mode operation” and showing ellipsis “. . .” where “manual traveling mode” would have been discussed in paragraph 34 of the ’053 Application). Petitioner cannot switch positions midstream and raise an entirely new argument in its reply that reasonably could have been made in the petition. See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (“Blizzard, as petitioner, had an opportunity to present this argument in its petition, but chose not to.”). A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23(b). Indeed, in its patent owner response, Club Car carefully notes that the ’053 Application’s manned operating mode is “not relied upon by Petitioner.” PO Resp. 28. Because Petitioner’s assertion in its reply of the ’053 Application’s manned operating mode constitutes new argument outside the scope of a proper reply, we decline to consider it.” slip op. at 30
Patent outcomesUS 7,480,569 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,480,569 - Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentablePTAB · Mar 29, 2019 · IPR2018-00340 · APJ Alex S Yap · IPR · Final written decision
Claims 1–7, 17–24, and 33 were not shown unpatentable under any asserted § 103 ground because the petition failed to establish the claimed command function.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) applies§112(f) does not applyMixed
“specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit has noted, “‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for this means-plus-function limitation. Here, Petitioner contends that the corresponding structure for performing the recited function is “‘a processor’ and equivalents.” Pet. 11. Petitioner’s expert further opines that “the patent identifies the Motorola DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary skill in the art would have known that the DCT-2000 includes a processor that executes command functions from the cable head-end.” Ex. 1022 ¶ 138. However, for means-plus-function limitations,” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Not shown unpatentable
“[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor[; it must] disclose an algorithm for performing the claimed function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We decline to adopt Petitioner’s proposed construction because Petitioner has not explained sufficiently that the recited function for this term (“responsive to receipt of the command functions for executing the command functions”) is a basic computer function that would not require a special purpose computer, nor has Petitioner directed us to any portion of the Specification sufficient to link a structure (i.e., an algorithm)4 to the recited function. The reference to “a processor” without specifying the algorithm is too generic to identify any specific structure. In Aristocrat, the Federal Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id., emphasis added. As the Federal Circuit explained, “a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’” 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a specialized function to be claimed without disclosure of the algorithm used for that programming would exhibit the same type of impermissible overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).” slip op. at 19
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“includes a set-top box compatible command function” because “while the references’ disclosures broadly indicate that their set-top boxes receive some information from a remote network location,” the information does not require a command to be sent for decoding or formatting. Ex. 2033 ¶ 43. Specifically, Mr. Tinsman testifies: Cable digital television content is typically transmitted as compressed data that must be decompressed by the set-top box for display on a television. Such content information is generally comprised of the compressed video data accompanied by metadata describing the content data to the set-top box, including, e.g., details of the data’s format. A POSITA would know that a set-top box does not need to receive specific instructions to perform a function every time it receives content data. Instead, the video decoder in the set top box automatically decodes the incoming data for display on a television without needing specific instructions to do so from the head-end unit. Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require a command to be sent. Resp. 29–30 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible command function’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 178. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that decoding and formatting information does not necessarily require a command to be sent. See Ex. 2034, 50:20–24.” slip op. at 29
Patent outcomesUS 7,260,538 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,260,538 - Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentablePTAB · Mar 29, 2019 · IPR2018-00341 · APJ Alex S Yap · IPR · Final written decision
Claims 34, 35, 37, 40, and 41 were not shown unpatentable under any asserted obviousness ground because the prior art did not establish the claimed set-top-box-compatible instructions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedSkill level board ownDecided for petitioner
“We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). One way in which this presumption can be overcome is if “the claim recites sufficient structure for performing the described functions in their entirety.” Id. To determine if the claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359–60 (Fed. Cir. 2004). Here, for each limitation, the claim recites sufficient structure for performing the described functions. For example, a television remote control is sufficient structure “for directly and wirelessly controlling television sets and additionally receiving user voice input and wirelessly transmitting first output representative of the voice input to a television settop box means” (Ex. 1022 ¶ 139) and a television set-top box is sufficient structure for “receiving television input signals via cable television link and providing television output signals compatible with television sets, and responsive to receiving the first output from one of the television remote control means to transmit representative second output to a central processing station via the cable television link.” (id. ¶ 143). Therefore, based on our review of the record before us, we are persuaded by Petitioner that these terms do not invoke 35 U.S.C. § 112, ¶ 6.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s conclusory rationale for the combinations, however, is untethered to any claim limitations. See Pet. 35–38, 56–58 (citing to Ex. 1022 ¶¶ 226–229, 232–234; 299–300, 304–306). For example, when discussing the combination of the references for a particular limitation, Petitioner starts with a discussion of either Julia or Murdock, followed by a discussion of Houser, and then provides a conclusory assertion that the combination would disclose the limitation at issue. See, e.g., Pet. 24–25 (“Julia also discloses . . . . In addition, Houser discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”), 26–27 (“As explained above, Julia discloses . . . . In addition, Houser also discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”). These discussions do not articulate, with respect to any specific limitation, or for any claim as a whole, why or how Julia or Murdock can and should be combined with Houser. A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, 812 F.3d at 1066. The Petitioner also states that “a skilled artisan would have been capable of combining the teaching[s] of [the prior art references because such] combination[s] would have been no more than combining prior art elements according to known methods to yield predictable results.” However, this discussion is similarly untethered to any claim element, or to the claim as a whole. Pet. 37–38, 58 (citing to Ex. 1022 ¶¶ 233, 306–307.) And, again, we are not informed what teaching of one reference is proposed to be combined with what teaching of the other reference, or why and how the combination would have been made. To the extent Petitioner’s position is that once it establishes that two prior art references are within the same field and are directed to solving the same problem, then all features within one reference can be used within the other, and vice versa, without need for further explanation, it cites no authority to support that broad position and we are aware of none. Therefore, we determine that Petitioner has not established, by a preponderance of the evidence, that claims 34, 35, 37, 40, and 41 would have been obvious over Julia in view of Houser or Murdock in view of Houser. 3.” slip op. at 20
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require an instruction to be sent.4 Resp. 31 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible instruction’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 176. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that an instruction be sent. See Ex. 2034, 50:20–24.” slip op. at 23
Patent outcomesUS 7,260,538 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,260,538
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.