• Apple Inc. v. THL Holding Company, LLCAll claims unpatentable
  PTAB · Jul 3, 2025 · IPR2024-00398 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious: claims 1, 4, 7, and 8 over Kalliola and Vauclair; claims 2, 3, and 6 with Kalayjian; claim 5 with Turunen; and claim 9 with Trimble.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with the qualifications proposed by Petitioner: “this description reasonably represents the level of ordinary skill necessary to understand and implement the teachings of the ’680 Patent, as well as the prior art cited in this proceeding.” PO Resp. 13–14 (citing Ex. 2002 ¶ 22). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’680 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14

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

    “Petitioner proposes that, based on Patent Owner’s proposed construction in the parallel litigation, we construe “pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Pet. 6 (quoting Ex. 1009, 15–168). In Response, Patent Owner adopts Petitioner’s interpretation of this term. PO Resp. 14. We adopt the parties’ proposed construction for this term. We determine that we need not construe any other claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

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

    “Second, Petitioner demonstrates that the combination of Kalliola and Vauclair teaches claim limitations 1(d)(iv) and 1(d)(v). As discussed and cited to above, the Petition identifies that, with Kalliola’s touch screen as the claimed “touch screen,” Kalliola’s processor presents a graphical user interface via its touch screen as set forth for limitation 1(c) and 1(d)(ii), and Kalliola’s processor operates in conjunction with its graphical user interface to perform claimed steps as set forth for limitation 1(d)(iii). See Pet. 20–29. We agree that the assertions are supported by Kalliola’s disclosure of a touch screen with a graphical user interface presented thereon, where “tactile elements” “allow the user . . . to enter data . . . into the device.” See Ex. 1004 ¶¶ 26, 40, 42, 44, 51, 71, Figs. 3, 5. Petitioner also asserts, and we agree, that Kalliola teaches the use of Bluetooth-enabled emitters in remote devices that communicate with its wireless communication device with a signal emitter. Pet. 29–31 (citing Ex. 104 ¶¶ 9, 71, 73–75, 77, 107, Fig. 5). Petitioner contends, and we agree, that Vauclair provides additional specificity regarding the pairing process between two devices with its disclosures of a pairing process between devices using protocols that include Bluetooth, wherein a user can select a pairing option from a menu on a display. Id. at 31–32 (citing Ex. 1005 ¶¶ 22, 24, 28, 30, 34–36, 49, Fig. 1; Ex. 1003 ¶¶ 164–167). Petitioner argues, and we agree, that it would have been obvious to a person of ordinary skill in the art to configure Kalliola to use its processor to present “a pairing menu to enable a user to initiate a Bluetooth pairing process between the WCD and the signal emitter by selecting a pairing option via the WCD’s touchscreen,” with Vauclair teaching at least the selection of a pairing option presented on its display, because the presented pairing menu on Kalliola’s touch screen would allow the user to pair the WCD with the user’s personal item signal emitters and would also allow the devices to recognize each other on subsequent connections. Id. at 34–35 (citing Ex. 1003 ¶ 172); see also Ex. 1005 ¶¶ 30, 36. Consequently, we also agree with Petitioner’s assertion that it would have been obvious to a person of skill of ordinary skill in the art that Kalliola’s graphical user interface on its touch screen would have generated signals corresponding to the user’s inputs at least to carry out designated functions, like the initiation of a pairing process, and “the signals generated by the GUI from interaction at the touchscreen would be sent to the WCD’s processor so that the processor can interpret the user’s inputs and take the appropriate action.” Pet. 35; see also Pet. Reply 2–7. Petitioner also asserts, and we agree, that generating processor signals in response to a user indication was a known mechanism for wireless devices, as were Bluetooth pairing and corresponding pairing menus, and there would be no change to the respective functions of Kalliola’s’ wireless communication devices and Vauclair’s pairing menu. Pet. 36 (citing Ex. 1003 ¶ 175). The Petition argues, and we agree, that because Bluetooth pairing and pairing menus were conventional prior to time of the invention, there would have been a reasonable expectation of success configuring Kalliola’s wireless communication device. Id. (citing Ex. 1003 ¶ 176); see also Ex. 1003 ¶¶ 71–75 (Dr. Buehrer providing evidence on Bluetooth-connected devices and associated pairing). Accordingly, we determine that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, a reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(iv). As to limitation 1(d)(v), we also agree with Petitioner that in response to a generation of a pairing signal as discussed in limitation 1(d)(iv), Vauclair discloses that wireless transceivers communicate a series of RF signals back and forth to pair the devices. Pet. 37–38. Petitioner asserts, and we agree, that, in combination, it would have been obvious to configure Kalliola’s Bluetooth transceiver with Vauclair’s teachings for the communication of RF signals to pair devices. Id. at 39. Petitioner contends, and we agree, that a person of ordinary skill in the art would have understood that Kalliola teaches that its wireless communication device performs Bluetooth communications with signal emitters, with the user selecting a desired signal emitter for locating objects, and that this pairing would also allow two Bluetooth devices to recognize each other on subsequent connections. Id. (Ex. 1003 ¶ 184). Petitioner asserts, and we agree, that applying Vauclair’s known technique of communicating RF signals to pair devices would improve Kalliola’s wireless communication device and yield the predictable result of Bluetooth-paired devices. Id. We also agree with Petitioner’s argument that this pairing was an understood and conventional feature of Bluetooth mobile communication devices, so there was a reasonable expectation of success in the combination. Id. at 40 (citing Ex. 1003 ¶ 186); see also Ex. 1003 ¶¶ 71–72 (Dr. Buehrer providing evidence on Bluetooth-connected devices). Accordingly, we find that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(v).” slip op. at 40

  • Strike new argumentNew argument consideredDecided for petitioner

    “Ex. 1003 ¶ 172. The Petition also asserts that, in the combination, there would be no change to the respective functions of either Kalliola’s WCD or Vauclair’s pairing menu. Pet. 36. Thus, the Petition relies on Kalliola’s processor, and its touchscreen, and graphical user interface with Vauclair’s teachings for the pairing menu displayed, wherein pairing signals are generated by Kalliola’s graphical user interface by interaction with the screen. As we discuss further below, Petitioner includes assertions that Vauclair itself teaches that the pairing signal is generated by its graphical user interface. See id. at 33, 37. The Petition, however, also relies on the combination of Kalliola and Vauclair to teach generating a pairing signal by Kalliola’s graphical user interface by interaction with its screen, as discussed above. Id. at 35. Accordingly, it is not necessary to reach the issue of whether Vauclair alone teaches that its graphical user interface generates the pairing signal. Additionally, we do not find that Petitioner’s further arguments in its Reply concerning interaction with Kalliola’s wireless communication device through its graphical user interface were impermissibly presented in view of the Petition’s specific assertions on the teachings of the combination of Kalliola and Vauclair, as discussed above, and its reliance on user interaction with Kalliola’s graphical user interface for the teaching of generating the pairing signal. See 37 C.F.R. § 42.23(b).” slip op. at 39

  Patent outcomesUS 11,265,680 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,265,680
• Apple Inc. v. THL Holding Company, LLCAll claims unpatentable
  PTAB · Jul 3, 2025 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 11–19 are unpatentable as obvious: claims 11–14 over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian; claims 15–18 with Thorn; and claim 19 with Thorn and Sharp.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). “Patent Owner agrees that this description reasonably represents the level of ordinary skill required to understand and implement the teachings of the ’246 Patent, as well as the prior art cited in the Petition.” PO Resp. 14 (citing Ex. 2002 ¶ 22). Accordingly, we adopt Petitioner’s proposed level of skill.” slip op. at 8

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

    “device.” This term appears twice in claim 11, once in the phrase “an orientation sensor to detect rotation of the mobile communication device,” and once in the phrase “rotation of the mobile communication device detected by the orientation sensor.” Ex. 1001, 39:13–14, 39:36–38. Patent Owner argues that we should construe this term as limited to “detecting the rotation of the mobile communication device as a whole, not the movement of individual components.” PO Resp. 15–18. Petitioner disputes this, arguing that “rotation of the mobile communication device” should be construed not only to cover rotation of the device as a whole but also should “encompass[] any rotation of the mobile communication device relative to any object, including itself,” which would extend to rotation of “any component of the device.” Reply 4–5. We need not resolve this dispute to determine the outcome of Petitioner’s asserted challenges to the ’246 patent. As discussed more fully below, under either party’s proposed construction of “rotation of the mobile communication device,” Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable. 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 9

  • Expert testimonyOther

    “On the record developed during trial, we are persuaded that Petitioner has shown by a preponderance of the evidence that Kalliola teaches “an orientation sensor to detect rotation of the mobile communication device,” where “rotation of the mobile communication device” includes rotation of the device as a whole, regardless of whether it also includes rotation of one portion of the device relative to another. Kalliola teaches “motion sensors integrated in WCD 100” that are “used to detect when WCD 100 is being moved,” as well as to detect “when user 110 moves WCD 100 too quickly for an accurate DoA estimation.” Ex. 1004 ¶¶ 84, 86. Although Patent Owner argues that Kalliola’s motion sensors do not detect rotation of the device, this is incorrect on the record as developed at trial. Kalliola teaches that the motion sensor may take “the form of a semiconductor gyroscope chip.” Id. ¶ 84. There is ample evidence that gyroscopes detect rotation. Ex. 1013, 38 (identifying as an “orientation sensor” a “[t]hree-axis gyro” and a “[d]ynamic [h]igh [r]ange [gyro]”); Ex. 1046, 49:18–20 (Dr. Feuerstein testifying that gyroscopes “can be used to detect angular velocity”); Ex. 1047 ¶ 47 (citing Ex. 1051, 170; Ex. 1053, 9) (Dr. Buehrer testifying that a person of ordinary skill in the art “would understand that gyroscopes are well-known inertial sensors that specifically detect rotational motion”). Thus, by a preponderance of the evidence, Petitioner has shown that Kalliola teaches the “orientation sensor to detect rotation of the mobile communication device” of this limitation.” slip op. at 17

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

    “whether Kalliola’s teaching of pausing and resuming its DoA estimation based on detected rotational motion, or Kalliola’s teaching of speeding up its DoA estimation based on detected rotational motion, amounts to determining direction based on rotation. Pet. 63–64; PO Resp. 25–27; Reply 24–27; Sur-Reply 11–14. On the record developed during trial, we are persuaded that the preponderance of the evidence supports a finding that Kalliola teaches determining direction based on rotation. First, Kalliola discloses “pausing a DoA estimation until the motion of the WCD is detected by the motion sensors,” then resuming “the updating of the DoA estimation” when motion is detected. Ex. 1004 ¶¶ 14, 84. Second, Kalliola discloses a “correction or compensation mode” that is “employed when user 110 moves WCD 100 too quickly for an accurate DoA estimation,” with this “increase[d] speed of the DoA estimation” being triggered by the “[i]ncreased activity detected by motion sensors in WCD 100.” Id. ¶ 86. As discussed above with respect to limitation 11(d), the detected motion that triggers either of these modes can be rotational motion of the WCD detected by a gyroscope.” slip op. at 22

  Patent outcomesUS 11,350,246 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,350,246
• Tesla, Inc. v. Intellectual Ventures II LLCInstituted
  PTAB · Jun 26, 2025 · IPR2025-00217 · APJ Jason W Melvin · IPR · Institution

  The Board instituted inter partes review of claims 1–5, 10–15, and 20 on all four asserted § 103 grounds.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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). For the reasons set forth below, we institute review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent, and we adopt it here.” slip op. at 5

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

    “The parties’ dispute on this issue turns on claim construction. Petitioner’s approach requires we read “accumulation” as updating transmission power for each received TPC command. That is consistent with some aspects of the ’153 patent’s description. See Ex. 1001, 9:29–42 (“[S]tep is the magnitude of the amount added to an accumulator upon receipt of each TPC command. . . . [T]he transmit power PTx(k) may be updated each time a new TPC command is received.”). Patent Owner’s approach requires only that TPC commands cumulatively affect transmission power. That also appears consistent with the ’153 patent’s description. See id. at 9:35–36 (“The transmit power PTx(k) may be updated for every frame period.”). Based on those disclosures, it appears that the Specification supports Patent Owner’s broader construction. We need not resolve the “accumulation” claim-construction dispute at this stage, because Petitioner’s Zeira-based ground justifies institution, as discussed below. The parties should address the proper construction for “TPC command accumulation” in the instituted trial.” slip op. at 8

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

    “We do not agree with Patent Owner that the present record shows Andersson’s and Khan’s approaches couldn’t or wouldn’t be combined in the manner Petitioner asserts. Although shared-channel applications may have motivated Khan’s approach, it seems that scheduling grants applicable to a particular UE could be transmitted to that UE along with Andersson’s TPC commands. Thus, Patent Owner does not undermine Petitioner’s prior-art combination on the present record. The additional record developed through trial may ultimately support Patent Owner on this point, but at present, this argument does not justify denial of institution. Patent Owner additionally takes issue with Petitioner’s asserted benefits such as “allowing for a larger number of active wireless units,” reducing complexity, and reducing latency. Prelim. Resp. 38 (quoting Pet. 26–27). Those disputes raise potential factual issues that are best resolved through trial.” slip op. at 10

  Claim construction§ 103 obviousness
  Patents in suitUS 10,952,153
• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.Instituted
  PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10

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

    “At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17

  Claim construction§ 102 anticipationDiscretionary denialcites Phillips
  Patents in suitUS 9,421,713
• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.Instituted
  PTAB · Jun 18, 2025 · IPR2025-00311 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR of claims 1, 3–11, and 17–22 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Mazumder and Mori.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “based on Petitioner’s first stipulation filed on December 18, 2024.15 Prelim. Resp. 13–15. Patent Owner does not address Petitioner’s updated second stipulation filed on April 8, 2025. This updated second stipulation mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of any potentially conflicting decisions. See Sand at 12. We therefore find that this factor weighs against exercising discretion to deny institution. See id., n.5. 5. Whether Petitioner and the Defendant in the Parallel Proceeding are the Same Party Whereas Petitioner does not address factor 5, Patent Owner argues that the parties to this proceeding are both in the related district court litigation. Pet. 98–99; Prelim. Resp. 15. While it is common in IPR proceedings for the petitioner and patent owner to also be parties in a related district court proceeding, this factor weighs slightly in favor of discretionary denial. Fintiv, Paper 11 at 13–14.” slip op. at 15

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

    “c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over the combination of Mazumder and Mori. Accordingly, we institute inter partes review with respect to all claims and all grounds asserted in the Petition. 5. Claims 3, 5–7, 9, 10, and 19–22 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’324 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 28–46. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 27

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). For a reference to be analogous art, it must be “either in the field of the applicant's endeavor or [be] reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).” slip op. at 20

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

    “Mazumder because “the presentation of both image types would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process.” Pet. 23–24 (citing Ex. 1003 ¶ 113). Patent Owner argues that “it is hindsight to use ‘the invention to define the problem the invention solves.’” Prelim. Resp. 43 (quoting Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); citing AT&T Services Inc. et. al. v. Innovative Sonic Ltd., IPR2024-001143 (PTAB Feb. 11, 2025)). According to Patent Owner, because neither Mazumder nor Mori teaches visual comparison of image types, the idea to improve the Mazumder-Mori combination by simultaneously displaying different image types and thus permitting visual comparison must be driven by hindsight. Id. at 44–45. But Petitioner cites evidence other than the ’324 patent to support the person of ordinary skill in the art having a desire to visually compare the different images presented in the Mazumder-Mori combination. Pet. 23–24 (citing Ex. 1003 ¶ 113). Specifically, Dr. Wolfe testifies that “the presentation of the actual images captured by the camera and the virtual images simultaneously within the user interface would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process” and that a person of ordinary skill in the art would have recognized this. Ex. 1003 ¶ 113. Thus, Petitioner has shown sufficiently for the purpose of the present decision that Mori teaches or suggests the disputed limitation of claim 1. We encourage the parties to develop the arguments and the record surrounding this issue further during the trial.” slip op. at 26

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,562,324
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under §103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

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

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable as obvious; claims 1–21 were not shown unpatentable because the asserted combinations did not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

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

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “attempts to extrapolate Mahajan’s specific teachings and specific architecture into a general principle such that specific commands are converted to universal commands and then universal commands are converted to specific commands regardless of the location of the process within a distributed system. See Tr. 14:5–11. Rather, we agree with Patent Owner that Petitioner’s extrapolation arguments are unsupported by Mahajan. We understand Petitioner argues that Mahajan’s “distributed computing environments” would have rendered it obvious to alter the location where command conversions occur. Pet. 41; Reply 10–11, 14. Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain” slip op. at 24

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-00322 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under § 103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

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

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.No claims unpatentable
  PTAB · Jun 10, 2025 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 14–16, 18, 27–29, 31, and 32 were not proven unpatentable because the asserted references failed to establish the claimed airflow path or a reason to make the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s and Patent Owner’s proposed levels of skill are similar and differ in that Petitioner’s relevant degrees and corresponding two years of experience additionally includes “industrial design” and “product design” and familiarity with “electrically powered vaporizing articles, their components or the underlying technologies” where Patent Owner requires two years of experience “designing electro-mechanical consumer products or an advanced degree.” Compare Pet. 7, with PO Resp. 2. Patent Owner alleges that “Petitioner has failed to establish unpatentability under either standard,” indicating that the level of skill in the art is not a dispositive issue. PO Resp. 3. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We note that the outcome of this Decision would be the same under Patent Owner’s proposed definition.” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “In this case, Mr. McAlexander meets both Petitioner’s and Patent Owner’s proposed level of skill in the art. As a result, we are persuaded Mr. McAlexander has the requisite skill and relevant expertise to offer testimony in this matter. For example, Mr. McAlexander has a Bachelor’s Degree in Electrical Engineering and far more than 2 years of experience in the electrical engineering field. Ex. 1027, 3–6, 7. In addition, Mr. McAlexander has provided expert consulting services in a wide range of technology areas involving the process and design of electro-mechanical consumer products. Ex. 1003 ¶ 5. Through one of Mr. McAlexander’s business ventures, his laboratory has “performed detailed airflow analyses, designing and constructing specialized apparatuses to emulate human breath, allowing for precise activation testing of ENDS devices.” Ex. 1043 ¶ 16. That said, a declarant’s expertise, even clothed as a skilled artisan, does not entitle a naked opinion persuasive weight. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985). Here, Patent Owner had the opportunity to, and in fact did, thoroughly cross examine Mr. McAlexander about the purported deficiencies in his testimony. See, e.g., Exs. 2052, 2054; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (“Vigorous cross examination [and] presentation of contrary evidence . . . are the traditional and appropriate means of attacking shaky but admissible evidence.”). Therefore, to the extent Patent Owner credibly identifies deficiencies in Mr. McAlexander’s testimony or that testimony lacks factual support or is based on broad, conclusory assertions, we will assign appropriate weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (explaining that it is within the Board’s discretion, as the trier of fact, to accord appropriate weight to the evidence presented).” slip op. at 12

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

    “Petitioner contends that the parties proposed a construction for “pressure valve,” a limitation appearing in claims 18 and 31, during the ITC investigation. Pet. 7 (citing Ex. 1001, 41:58–65). Patent Owner contends that the terms of the ’123 patent should be given their plain and ordinary meaning. PO Resp. 4. Because resolution of the issues presented in this case do not require construction of the term “pressure valve,” we do not expressly construe this claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “We agree with Patent Owner. To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. “The requirement that the prior art elements themselves be arranged as in the claim means that the claims cannot be treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Indeed, the prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Net MoneyIN, 545 F.3d at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id.” slip op. at 20

  Patent outcomesUS 10,130,123 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,130,123
• Oracle Corporation v. Joseph L. De BellisAll claims unpatentable
  PTAB · Jun 4, 2025 · IPR2024-00221 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–7, 15–23, and 25–30 unpatentable as obvious over the five asserted combinations; Zellweger was prior art under § 102(e).

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “We agree with Petitioner’s assertions that Patent Owner has not shown conception of the noted claim language prior to Zellweger’s filing date. For example, claim 1’s limitation 1A requires “determining a database schema.” We find no mention of this in Patent Owner’s conception evidence.” slip op. at 20

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

    “Patent Owner does not identify any evidence in the ’720 patent, its file history, or elsewhere, to support its restrictive construction of the claim language, nor do we find any lexicographical definition or disavowal of claim scope to support it. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims”). Hence, the ordinary and customary meaning of “providing a list of database fields” in limitation 1B is not limited to the time a search query was 3 A patent related to the ’720 patent, US Patent No. 9,507,835 B2, filed December 17, 2015, uses the term “search-on-the-fly” in its claims. In contrast, the ’720 patent’s claims are directed toward the truncation feature described in the patent. This suggests that Patent Owner chose not to limit the ’720 patent’s claims to the context of “search-on-the-fly” notwithstanding the ’720 patent’s title. Ex. 1001, code (54). submitted.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends as follows: A person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had at least a bachelor’s degree in computer science, electrical engineering, or a related subject, and at least two years of experience working with databases, computer networks, and related web technologies. A more advanced degree can substitute for less work experience and vice versa. Pet. 17 (citing Ex. 1003 ¶¶ 57–61). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the problems, solutions, technology, and educational level set forth in the ’720 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 15

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

    “Specifically, Petitioner contends that Cochran seeks to provide an efficient and user-friendly method to search computer databases, and recognizes that pick lists for searches may be voluminous and exceed the capacity of a pick box to display them simultaneously such that Cochran would benefit from improved navigation methods. Pet. 55–56 (citing Ex. 1005, 4:4–19, 10:58–65; Ex. 1003 ¶¶ 482–485). Petitioner asserts that Zellweger sought to remedy the same problem of navigating long pick box lists, and argues that a POSITA would have looked to Zellweger’s Alphabet or Content Lists to replace Cochran’s scroll bars. Id. at 56–57 (citing Ex. 1003 ¶ 485). Petitioner contends that the combination is “nothing more than using one known method (Zellweger) to improve another known method (Cochran) according to the express teachings of Zellweger to yield predictable results.” Id. at 57. Petitioner contends that Cochran and Zellweger are analogous because they are directed to the same field of accessing information in databases through graphical interfaces that make information more accessible, and are both implemented as computer software. Id. (citing Ex. 1005, code (57), 1:14–20, 4:2–57; Ex. 1007, code (57), 1:35–40, 2:30–43; Ex. 1003 ¶¶ 480–481). Petitioner alleges that a POSITA would have had a high expectation of success because, among other reasons, altering Cochran to truncate entries using Zellweger’s Alphabet and Content List menus would require nothing more than routine programming. Id. at 57–58.” slip op. at 26

  Patent outcomesUS 6,760,720 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,760,720

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.