- Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00573 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable as obvious over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“vi. Combining Giobbi ’157, Giobbi ’139, and Dua Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.InstitutedPTAB · Jul 29, 2025 · IPR2025-00491 · APJ Frederick C Laney · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that claims 1, 9, and 15 are unpatentable over Ground 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments and evidence presented by both parties at this stage of the proceeding, we are persuaded that there is a reasonable likelihood Petitioners would prevail in showing that Beel discloses or suggests to a skilled artisan a base unit having a transmitter and a first peripheral device having a receiver and at least one fixed or a configurable endpoint, where the at least one fixed or a configurable endpoint is a data source or a data sink which is able to store or emit data, of the functional device exposed or made available on the first peripheral device.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioners contend that a person having ordinary skill in the art would have had “Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field. Additional educational experience could substitute for some of the work experience.” Pet. 9–10 (citing Ex. 1002 ¶¶ 36–37). Patent Owner does not dispute this position at this time. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioners’ proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’972 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionTerm construed board ownDecided for patent owner
“We do not agree with Patent Owner that “fixed” or “configurable” requires more than what is agreed to by the parties––i.e., the characteristics and operational parameters of the endpoint are either set prior to operation or can be set during operation. We disagree that the ’972 patent defines “fixed or a configurable endpoint” as “a number of descriptive fields of the endpoint.” Rather column 8, lines 5–6, of the ’972 patent states that “[a]n endpoint is defined by a number of descriptive fields,” which speaks more about the mechanism used to establish the characteristics and operational parameters of the endpoint than it does about how “fixed” or “configurable” would be understood by a skilled artisan. And the fact that an endpoint may be defined by descriptive fields does not inform a skilled artisan that “fixed” or “configurable” requires the endpoint to allow the processing device to correctly interpret and utilize the data from the endpoint. Correctly interpreting and utilizing data may be the goal, but that goal is not turned into a requirement of the claims because the recited endpoint is fixed or configurable. Similarly, there is no basis for making that goal a requirement simply because a fixed endpoint is described as providing basic functionality and a configurable endpoint is described as being configurable by the base unit either while pairing or via the processing device. As a result, we find little merit in Patent Owner’s contention that the language “fixed or a configurable” requires a process for setting up the characteristics and operational parameters of an endpoint within a device so that the processing device can correctly interpret and utilize the data of this endpoint. Patent Owner, however, will have an opportunity during trial to further develop this contention.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableInstituted
“Having considered the arguments and evidence presented by both parties at this stage of the proceeding, we are persuaded that there is a reasonable likelihood Petitioners would prevail in showing that Beel discloses or suggests to a skilled artisan a base unit having a transmitter and a first peripheral device having a receiver and at least one fixed or a configurable endpoint, where the at least one fixed or a configurable endpoint is a data source or a data sink which is able to store or emit data, of the functional device exposed or made available on the first peripheral device. Petitioners’ offers evidence, supported by its expert declarant, that the endpoints disclosed in Beel are either fixed, such as a mass storage unit with predefined characteristics, or configurable, such as a virtual audio interface that may change configuration based on driver instructions or use context. Pet. 32–33. As Petitioners point out, the ’972 patent itself acknowledges that Beel’s Figure 11 illustrates a system comprising a combination of vendor-specific and standard endpoints, and further interprets these endpoints to correspond to drivers and host applications used for functionality like screen sharing and audio streaming, which demonstrates a direct conceptual and structural alignment between the ’972 patent and Beel. Id. Furthermore, Petitioner’s evidence demonstrates sufficiently that Beel describes a peripheral device acting as a virtual composite device capable of emulating different functions—such as a USB audio speaker—while rerouting the data stream (e.g., RTP audio stream) over the network. Id. For instance, Petitioners’ evidence demonstrates sufficiently Beel discloses or suggests that audio data can be captured by a virtual sound card interface implemented within the peripheral device, re-encoded, and transmitted to the base unit for playback or synchronization with video content. Id. In addition, Petitioners have demonstrated sufficiently that Beel’s architecture supports the requirement that the endpoint of the functional device—whether it is a camera, microphone, or speaker—is made available through or exposed on the peripheral device. Id. The functional device’s capabilities are effectively rendered accessible to the processing device by way of the peripheral device, which acts as an intermediary. Id. Petitioners’ evidence demonstrates sufficiently that this exposure can occur via logical interfaces, such as USB Audio Class (UAC) virtual drivers, that allow the processing device to recognize and interact with these endpoints using standard protocols. Id. Furthermore, Petitioners show sufficiently Beel discloses that the peripheral device may include software that facilitates communication with and presentation of media content on the processing device, further demonstrating that the endpoints are not only present but also actively used for data transmission. Id. Patent Owner’s arguments, at least at this stage of the proceeding, fail to undermine Petitioners’ showing because they are largely just that–– attorney arguments––without sufficient evidentiary backing and because they lack sufficient clarity regarding how the recited claim language distinguishes Beel’s disclosed system. First, Patent Owner makes several representations that Petitioners misplace its reliance on certain teachings or suggests found in Beel and that Beel does not support the contention Petitioners make, but Petitioners’ positions are backed the testimony of Dr. Almeroth and Patent Owner offers no contradictory evidence for why a skilled artisan would understand Beel differently. And, suffice it to say that, when the declaration of Dr. Almeroth is considered in juxtaposition with the cited evidence from Beel, we have found declarant Dr. Almeroth sufficiently persuasive to demonstrate Petitioner is reasonably likely to prevail on the point. For example, Patent Owner simply argues that “there is no indication in Beel of using any fixed or a configurable endpoint of the functional device exposed or made available on the first peripheral device” (Prelim. Resp. 31), but declarant Dr. Almeroth states that “Beel discloses that a peripheral device can act as a ‘virtual audio device’ using a USB Audio Class (UAC) interface,” which “indicates that endpoints of the functional device are ‘exposed or made available on the first peripheral device’” (Ex. 1002 ¶ 130 (emphasis added); see also id. ¶¶ 128–129). Patent Owner’s argument, without any evidentiary support, does little to undermine the opinion testimony from Dr. Almeroth about what Beel’s teachings would indicate to a skilled artisan. Second, although Patent Owner repeatedly states that Beel fails to” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,684,972 - PTAB · Jul 25, 2025 · IPR2025-00237 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 6, 11, 12, 17, 21, 23, 27, 28, or 30 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’879 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 19. Because Petitioner’s unopposed definition is consistent with the ’879 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 36–48. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’879 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 24, 30–31 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 155, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claim 1 are supported by the’124 provisional and/or whether the ’879 patent’s priority chain is intact. Pet. 57–66. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find that (1) the’124 provisional provides adequate written description support for each of the challenged claim elements; (2) the ’879 patent’s priority chain is intact; and (3) the ’879 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims. Because Frisen is not prior art, we do not specifically comment on its teachings, nor the factual assertions regarding its teachings provided by Petitioner or Patent Owner. 4. Conclusion For the foregoing reasons, we determine that Petitioner has not established a reasonable likelihood of showing that Frisen anticipates any of claims 1, 2, 5, 6, 11, 12, 17, 21, 23, 27, 28, and 30.” slip op. at 32
§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,001,879 - PTAB · Jul 25, 2025 · IPR2025-00236 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6, 7, 12, 13, 18, 20, 21, 23, 25, 26, or 30 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’468 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a doctorate degree (or equivalent) in bioengineering, genetics, genomics, chemistry, biochemistry, biophysics, molecular imaging or a related discipline with at least 2-4 years of academic, research, or industry experience in genomic technology. In the course of their training and experience, the POSA would have acquired a working knowledge of nucleic acid arrays, combinatorial chemistry techniques for making and using such arrays, nucleic acid sequencing and sample preparation techniques, such as barcoding, imaging methods for signal detection, as well as histopathology techniques for cell permeabilization and tissue handling. Pet. 13–14 (citing Ex. 1102 ¶¶ 30–32). Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 19. Because Petitioner’s unopposed definition is consistent with the ’468 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 37–44. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’468 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 25–26, 32–33 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 135, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 37–44. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’468 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 25–26, 32–33 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 135, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,662,468 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · Jul 17, 2025 · IPR2024-00407 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other three grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function[] and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral arguments, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22– 18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 9, 22), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 9–19 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 19–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, RDC . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 38
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · Jul 17, 2025 · IPR2024-00405 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3 (emphasis omitted)), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral argument, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22–18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 8, 21), and provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 8–20 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 20–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 26–27, 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over the proposed combination of Giobbi ’157, Giobbi ’139, and Dua.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1. iv. Remaining limitations of claim 1 Petitioner provides detailed explanations as to how the combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining claim limitations as recited in independent claim 1, citing Dr. Traynor’s testimony for support. Pet. 26–27, 29–33 (citing Ex. 1005 ¶¶ 12, 26–44, 50, Fig. 3; Ex. 1006 ¶¶ 22– 44, 88–89; Ex. 1007, 6:46–65, 12:36–45, 12:51–64, 13:9–18, 13:49–60, 14:53–64, 15:42–46, 16:31–34, Figs. 1, 4A, 5–6; Ex. 1003 ¶¶ 56–64). For example, Petitioner contends that Giobbi ’139 “discloses that RDCs operate on battery power (such that the device including an RDC contains ‘a battery’.)” Id. at 26 (citing Ex. 1006 ¶ 89). In addition, Petitioner contends that “Dua discloses that its devices include an ‘internal battery 103.’” Id. at 27 (citing Ex. 1007 12:36–45, 13:49–60, Figs. 1, 5–6; Ex. 1003 ¶ 58). Petitioner also contends that Giobbi ’157’s RDC receives data from the PDK, and discloses “[t]he Reader 108 wirelessly communicates with the PDK 102 when the PDK 102 is within a proximity zone of the Reader 108.” Id. at 29–30 (citing Ex. 1005 ¶¶ 26–44, 50). Petitioner further contends that “Dua’s Reader Unit 304 is another example of an ‘integrated, wireless communication interface’ as “Reader Unit 304 also ‘communicat[es] wirelessly with at least one external device within a proximity zone’ and is ‘communicatively coupled to [an] integrated, secure memory’ (the RFID Tag Unit 306).” Id. at 31–32 (citing Ex. 1007, 6:46–65, 12:51–64, 13:9–18, 14:53–64, 15:42–56, 16:31–34, Figs. 4A, 6; Ex. 1003 ¶ 63) (alteration in original). Petitioner further provides detailed explanations as to why a POSITA” slip op. at 38
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Because the determination of whether the claims invoke § 112(f) comes down to “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” (Williamson, 792 F.3d at 1348), we find Dr. Traynor’s testimony that claim 1 recites sufficiently definite structure persuasive. Ex. 1032. As the Federal Circuit advised in Williamson, declarations and/or testimony of expert witnesses can play a large role in this determination. Williamson, 792 F.3d at 1348. Similarly, in Dyfan, the Federal Circuit found the district court ignored key evidence – unrebutted deposition testimony regarding how a POSITA would have understood claim terms at issue. Dyfan, 28 F.4th at 1367. In particular, the Federal Circuit in Dyfan found to be “key evidence” the expert’s explanation that the terms, themselves, connote structure, wherein, in combination with the recitation of the code or application’s operation would have connoted structure to a POSITA. Id. In this proceeding, we find persuasive Dr. Traynor’s testimony that a POSITA would have understood the terms “local, secured information stored by the integrated, secure memory,” and “wireless communication interface communicating wirelessly with the at least one external device within the proximity zone,” to have “sufficient definite structure, such that a § 112, ¶ 6 interpretation is improper.” Ex. 1032 ¶ 4. In particular, we find persuasive Dr. Traynor’s testimony that the term “memory” alone has definite structure, and, for example, “is defined as the ‘capacity of a computer or integrated computer system for short and medium-term retention of digital data’ and speaks to a broad class of structures used to retain data for various purposes.” Id. at 5 (citing Ex. 1020, 5). According to Dr. Traynor, “not only does memory connote structure, but a POSITA would have recognized that memory can participate in ‘enabl[ing] one or more of an application, a function, and a service’ by simply storing information . . . necessary to access or otherwise invoke that application.” Id. at 6 (first alteration in original). Dr. Traynor’s testimony is consistent with the Specification of the ’960 patent, which describes a microchip that stores information in memory and responds through an antenna when probed. See Ex. 1001, 2:3–29. Similarly, we also find persuasive Dr. Traynor’s testimony that a “wireless communication interface communicating wirelessly with the at least one external device within the proximity zone” also has sufficiently definite structure for performing the function of “enabling one or more of an application, a function and a service.” Ex. 1032, 8. In particular, we find persuasive Dr. Traynor’s testimony that “a POSITA would have understood that an ‘integrated wireless communication interface’ speaks to a class of structures used to connect to wireless networks.” Id. According to Dr. Traynor, “[a] POSITA also would have readily recognized that a ‘wireless communication interface’ is often used to ‘enable one or more of an application, a function, and a service’ by enabling wireless communication of information . . . necessary to access or otherwise invoke that application, function, or service.” Id. at 10. Dr. Traynor cites to various technical dictionaries to persuasively support his testimony. See Ex. 1021 (WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY), 11–12; Ex. 1023 (NEWTON’S TELECOM DICTIONARY), 5; Ex. 1024 (THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS), 5–7; Ex. 1025 (MICROSOFT COMPUTER DICTIONARY), 3–4. Thus, although Patent Owner argues that claim 1 invokes § 112(f) (PO” slip op. at 19
Patent outcomesUS 10,073,960 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Neurent Medical Inc. / Neurent Medical Ltd. v. Aerin Medical Inc.All claims unpatentablePTAB · Jul 11, 2025 · IPR2024-00282 · APJ Zhenyu Yang · IPR · Final written decision
Claims 1–4 and 7–9 are unpatentable as obvious, principally over Edwards-’535 and Stern for claims 1–3 and 7–9, and Makower, Edwards-’535, and Stern for claims 1, 2, and 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“To the extent Petitioner’s definition could be interpreted to encompass someone who only has experience using or testing unrelated medical devices, we tend to agree with Patent Owner. But it does not follow that experience with the clinical use and testing of medical devices, including those that deliver energy to tissue, would not be relevant background for one of ordinary skill. See Reply 27–28 (identifying evidence that clinical experience is relevant). The devices and methods in the challenged patent and asserted prior art are designed to be used by clinicians. Accordingly, clinical experience using and testing them would inform their design and therefore be relevant experience for one of ordinary skill in the art. For these reasons, we do not adopt Patent Owner’s proposed modification of Petitioner’s definition, which would remove clinical use and testing from the list of activities in Petitioner’s POSITA definition. See PO Resp. 7 (proposing redlines). Instead, after reviewing the record, we adopt Petitioner’s definition as it is consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention. Regardless, Petitioner’s declarant, Dr. Martin, is qualified to offer opinions under either definition. Moreover, the parties do not argue that their respective position would be different under either POSITA definition. See PO Resp. 8 (Patent Owner arguing that the challenges fail “[r]egardless of how a POSITA is defined”); Ex. 1083 ¶ 88 (Dr. Martin testifying that his opinions “remain the same regardless of which definition applies”). Accordingly, all of the findings and conclusions herein would be the same under either side’s definition of a POSITA.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Petitioner argues that the part of claim 1’s preamble “to treat rhinitis” is not limiting. Pet. 18. According to Petitioner, the body of claim 1 recites a structurally complete apparatus, and the preamble only states an intended use for the device without limiting the claimed structure. Id. at 18–19. Patent Owner neither addresses this issue, nor proposes any other claim construction. PO Resp. 13 (“Patent Owner believes that no claim constructions are required to resolve the issues raised [in this IPR].”). On this record, we find Petitioner’s argument persuasive and determine that the part of claim 1’s preamble “to treat rhinitis” is not limiting.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“techniques of delivering bipolar RF ablation energy through expandable devices to the mucosal tissue of different body cavities.” Id. at 39. According to Petitioner, “combining Edwards-’535 and Stern involves applying Stern’s known bipolar pairing technique to Edwards-’535’s known device that was ready for improvement (because Edwards-’535 omits electrode wiring details) to yield predictable results.” Id. Thus, Petitioner concludes that an ordinarily skilled artisan would have had a reasonable expectation of success when modifying Edwards-’535 in view of Stern. Id. at 38–40. Patent Owner does not dispute Petitioner’s mapping for claim limitations 1[a]-1[c] and 1[f] above, nor does Patent Owner challenge Petitioner’s reasoning for combining Edwards-’535 with Stern. See PO Resp. 14. Patent Owner, however, argues that Petitioner has failed to show Stern teaches limitations 1[d] and 1[e] “because Stern teaches a device comprising only a single pair of bipolar radiofrequency electrodes and a single radiofrequency output channel.” Id. We find that a POSITA would have been motivated to combine the teachings of Edwards-’535 and Stern and would have had a reasonable expectation of success in doing so for the reasons set forth in the Petition. We also find that the articulated combination of Edwards-’535 and Stern teaches all of the limitations of claim 1. We adopt Petitioner’s undisputed analysis of claim limitations 1[a]-1[c] and [f] and reasoning for combining the references, and credit its supporting evidence. See Pet. 26–33, 43–46; Ex. 1002 ¶¶ 84–102, 159–165. Below we address the parties’ arguments regarding the disputed limitations 1[d] and 1[e].” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In our view, nothing is missing. Stern teaches that the circuitry in Figure 15 is configured to form multiple pairs of bipolar RF electrodes. Ex. 1033, 12:61–13:2 (explaining “[a]s an example” the closing of certain switches in Figure 15 to activate a bipolar pair between electrodes 220 and 224 and a second bipolar pair between electrodes 222 and 226 and further noting that “[c]learly bipolar operation is not limited to these . . . pair couplings” because other switches could be operated to activate a bipolar pair between electrodes 220 and 222); Ex. 1002 ¶¶ 108–111, 135–138. Indeed, Stern consistently uses the word “pairs,” i.e., the plural not the singular, to describe the bipolar operation of its device. See, e.g., Ex. 1033, 2:36–40, 3:38–40, 12:20–25, 12:29–30, 13:27–44, 20:9–10 (describing the bipolar operation of “pairs” nine times). Accordingly, we disagree with Patent Owner’s argument that Stern teaches a device configured to have at most only a single pair of bipolar RF electrodes. Second, Stern teaches that the “embodiment of FIG. 15 . . . provides flexibility within the bipolar operation so that any pair or any combination of pairs may be utilized together.” Ex. 1033, 13:39–43 (emphasis added). Thus, even if claim 1 did require simultaneous activation of multiple bipolar pairs, we agree with Petitioner that such functionality is also taught by Stern. See Reply 5–6.” slip op. at 20
Patent outcomesUS 11,766,286 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,766,286 - Neurent Medical Inc. / Neurent Medical Ltd. v. Aerin Medical Inc.All claims unpatentablePTAB · Jul 11, 2025 · IPR2024-00278 · APJ Michael A Valek · IPR · Final written decision
Claims 1, 4–6, 9, 10, 12, 13, and 15–17 are unpatentable as obvious over the asserted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner disputes the second part of Petitioner’s definition “because the ‘and/or’ encompasses within the definition . . . persons who only have experience with the clinical use or testing of medical devices.” Resp. 6. According to Patent Owner, one of ordinary skill “would have had more experience than just clinically using medical devices or simply conducting tests with medical devices” Id. at 6–7. To the extent Petitioner’s definition could be interpreted to encompass someone who only has experience using or testing unrelated medical devices, we tend to agree with Patent Owner. But it does not follow that experience with the clinical use and testing of medical devices, including those that deliver energy to tissue, would not be relevant background for one of ordinary skill. See Reply 33–34 (identifying evidence that clinical experience is relevant). The devices and methods in the challenged patent and asserted prior art are designed to be used by clinicians. Accordingly, clinical experience using and testing them would inform their design and therefore be relevant experience for one of ordinary skill in the art. For these reasons, we do not adopt Patent Owner’s proposed modification of Petitioner’s definition, which would remove clinical use and testing from the list of activities in Petitioner’s POSITA definition. See Resp. 7 (proposing redlines). Instead, we apply Petitioner’s definition. Regardless, Petitioner’s declarant, Dr. Martin, is qualified to offer the opinions in his declarations under either definition. Moreover, Patent Owner does not identify any testimony it contends would be different under its POSITA definition. See Ex. 1083 ¶ 103 (Dr. Martin testifying that his opinions “remain the same regardless of which definition applies”). Accordingly, all of the findings and conclusions herein would be the same under either side’s definition of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Neither side proposes any terms for express construction. Petitioner contends “the Board need not construe any terms because the Challenged Claims are invalid under any reasonable interpretation.” Pet. 20. “Patent Owner believes that no claim constructions are required to resolve the issues raised” in this IPR. Resp. 13. Nevertheless, in their arguments over whether the prior art teaches certain claim elements, each side accuses the other of misinterpreting or reading requirements beyond their ordinary meaning into those terms. See Reply 3–10 (urging that Patent Owner’s arguments read requirements into elements 1[d] and 1[e]); Sur-Reply 9–15 (arguing Petitioner applies an incorrect definition of “radio frequency output channel”). To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context they are raised in our analysis below. No further express claim construction is necessary for this decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that one of ordinary skill in the art would have been motivated to combine Edwards-535 and Stern, and had a reasonable expectation of success in doing so for the reasons set forth in the Petition. We also find that the articulated combination of Edwards-535 and Stern teaches all of the limitations of claim 1. We adopt Petitioner’s undisputed analysis of claim elements 1[a]-[c] and [f] and reasoning for combining the references, and credit its supporting evidence. See Pet. 7–14, 17–20; Ex. 1002 ¶¶ 79–103, 113–21. Below we address the parties’ arguments regarding the disputed elements 1[d] and 1[e].” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that Petitioner has the more persuasive position and has demonstrated that Stern teaches element 1[e]. Petitioner demonstrates Stern’s multiple RF output channels with the annotated version of Figure 15 shown below. Pet. 42–43. As shown by Petitioner’s annotations above, the channel (highlighted in orange) connecting the output received from voltage source 228 to the first bipolar pair (circled in green on the left) is distinct from the channel connecting the output to the second bipolar electrode pair (circled in purple on the right) because depending on which switches are closed, energy travels through a separate connection between those switches and the corresponding electrodes. We agree with Petitioner, and credit Dr. Martin’s testimony, that each of the output channels highlighted in orange in Stern’s Figure 15 above “are output channels as required by the claims because the channels are separately/individually connected to the electrodes” and “control individual pairs of bipolar RF electrodes.” Id. at 43–44; Ex. 1002 ¶¶ 124–128; see also Ex. 1083 ¶ 45 (“an ‘output channel’ connects electrodes and provides the ability to independently control pairs of electrodes”). This understanding of the term “output channel” is consistent with the claim language. Claim 1 recites “multiple radiofrequency output channels” wherein “each pair” of bipolar RF electrodes “is connected with a respective one of the multiple radio frequency output channels.” Ex. 1001, 52:27–33. The RF generator itself and its connection to the output channels is not recited in claim 1. Instead, the claim language focuses on the connection between the electrode pair and its respective output channel. The description in the specification also focuses on the connection to the electrodes and further explains that having a “separate, controlled electrical channel” for “each pair of electrodes” allows for “different regions of the treatment element to be activated separately.” Ex. 1001, 24:45–52, 48:63–65; see also Ex. 1083 ¶ 33 (“[e]very time the patent mentions ‘electrical channel’ or ‘output channel,’ it is referring to connections to electrodes”). This aligns with the depiction of the output channels in the ’318 patent’s figures. See Ex. 1001, Figs. 39–44 (showing RF output channel 961 connected to electrodes). Petitioner demonstrates this in the annotated version of Figure 39 shown below. Reply 8.” slip op. at 29
Patent outcomesUS 11,033,318 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,033,318 - Neurent Medical Inc. / Neurent Medical Ltd. v. Aerin Medical Inc.All claims unpatentablePTAB · Jul 11, 2025 · IPR2024-00277 · APJ Michael A Valek · IPR · Final written decision
Claims 1–4, 6–12, and 16 are unpatentable as obvious over the Edwards-535, Kong, and Stern combinations, with Edwards-886 added for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“To the extent Petitioner’s definition could be interpreted to encompass someone who only has experience using or testing unrelated medical devices, we tend to agree with Patent Owner. But it does not follow that experience with the clinical use and testing of medical devices, including those that deliver energy to tissue, would not be relevant background for one of ordinary skill. See Reply 29–31 (identifying evidence that clinical use and testing experience is relevant). The devices and methods in the challenged patent and asserted prior art are designed to be used by clinicians. Ex. 1083 ¶¶ 5, 14–15 (explaining that clinicians who use such devices gain extensive experience regarding how they work); see also Ex. 1084, 82:13–83:20 (Dr. Bikson testifying that a physician would perform the claimed method steps). Accordingly, clinical experience using and testing them would inform their design and be relevant experience for one of ordinary skill in the art. For these reasons, we do not adopt Patent Owner’s proposed modification of Petitioner definition, which would remove clinical use and testing from the list of activities in Petitioner’s POSITA definition. See Resp. 7 (proposing redlines). Instead, we apply Petitioner’s definition. Regardless, Petitioner’s expert, Dr. Martin, is qualified to offer the opinions in his declarations under either definition and Patent Owner does not identify any testimony it contends would be different under its POSITA definition. See Ex. 1097 ¶ 49 (Dr. Martin testifying that his opinions “remain the same regardless of which definition applies”). Moreover, as explained below, we are not persuaded by Patent Owner’s challenge to Dr. DelGaudio’s qualifications and give his testimony appropriate weight in our analysis. For these reasons, our findings and conclusions would be the same under either side’s definition of the level of ordinary skill in the art.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Third, nothing suggests that Dr. DelGaudio is not qualified to offer opinions regarding the knowledge and skill of one of ordinary skill in the art. In addition, to his relevant clinical experience, Dr. DelGaudio has experience designing different types of medical devices and consulting with device manufacturers to provide feedback and improve devices used in nasal surgery. Ex. 1083 ¶¶ 9–11. Thus, even if we had adopted a POSITA definition requiring design and development experience, Dr. DelGaudio would qualify as one of ordinary skill in the art because he has such experience in addition to his extensive clinical background. Id. Nevertheless, Patent Owner argues he is “not an individual capable of designing and developing the medical device used in the claimed method” because “Dr. DelGaudio has no experience in designing medical devices that deliver energy to tissue.” Sur-reply 22–24 (emphasis added). That argument is unavailing because such devices and methods of using them such as those recited in the claims of the ’271 patent are often developed by a team of individuals with different backgrounds and expertise. That Dr. DelGaudio working alone may not be capable of designing and developing such a device does not disqualify him from offering testimony from the perspective of one of ordinary skill in the art, particularly as it relates to those claim elements that recite the use of the device as opposed to its technical details.8 Moreover, Dr. DelGaudio was careful not to overstep the bounds of his expertise, relying on testimony from Dr. Martin to confirm his understanding concerning some of the engineering details of the devices themselves. See Ex. 1002 ¶¶ 94, 124, 127, 130, 151; see also Ex. 1083 ¶ 12 (explaining he relied on Dr. Martin to confirm his understanding of teachings in Stern that disclose “implementation details about circuitry used to operate the bipolar electrodes, the physics of delivering energy to tissue, among other things”); Ex. 1004 ¶¶ 66–131 (Dr. Martin testifying regarding a POSITA’s understanding of the prior art as it relates to such elements). Fourth, even if Dr. DelGaudio did not himself qualify as one of ordinary skill, we could still consider his testimony on those matters on which he was qualified. See Consolidated Trial Practice Guide (Nov. 2019), 52, available at https://www.uspto.gov/sites/default/files/documents /tpgnov.pdf (“CTPG”) (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’”) (citing cases). We agree with Petitioner that this would include matters such as the use of the devices described in the cited references in a clinical setting. See Reply 28. 8 Indeed, by its logic, Patent Owner’s own expert would not be one of ordinary skill in the art because he is not himself capable of practicing the claimed method. See Ex. 1084, 24:13–22, 82:19–83:8 (testifying he has never used an RF device to treat a patient and would not himself perform the recited method).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner’s position is persuasive. Even without taking into account the reasoning based on Baker (which we address separately below), Petitioner has demonstrated a sufficient rationale for incorporating Stern’s arrangement of two rows of bipolar electrode pairs into Edwards-535’s device. Edwards-535 teaches that a plurality of electrodes may be positioned on the surface of its treatment element, but does not specify how those electrodes are arranged or controlled. Ex. 1010, 8:25–27; Ex. 1004 ¶¶ 68–69. Stern teaches a control system for selectively delivering power to bipolar electrode pairs arranged in two rows on the surface of its device that provides even heating and precise control. Ex. 1004 ¶¶ 80–85. As Dr. DelGaudio explains, one of ordinary skill in the art would have regarded these attributes to be particularly beneficial when delivering treatment to the “nasal passages . . . given the uneven morphology of nasal cavity tissue and the proximity of the RF energy delivery to a patient’s brain and other critical tissues within the head.” Ex. 1002 ¶ 94. We credit the testimony of Petitioner’s experts that one of ordinary skill would have been motivated to incorporate Stern’s teachings, including the complementary two-row surface electrode arrangement shown in Figure 19, for these reasons. See Ex. 1002 ¶¶ 93–94; Ex. 1004 ¶¶ 72–73, 75–88, 96–97 (explaining that Stern’s techniques would have been used to improve Edwards-535’s device in a similar way). Petitioner’s reasoning that “arranging electrodes in rows . . . facilitates simple spatial resolution of the applied energy” is also persuasive. See Pet. 47–48. As Dr. Martin explains, one of ordinary skill in the art would have understood that arranging bipolar electrodes in two or more rows was a “common way to arrange such electrodes” (Ex. 1004 ¶ 34) and a “simple way to direct energy to specific locations for treatment would have been to place pairs of electrodes in rows . . . along the device at the locations being treated.” Id. ¶ 95.” slip op. at 41
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Petitioner’s position is persuasive. Stern’s Figure 15 shows bipolar electrodes 220 and 224 in a first horizontal row and electrodes 222 and 226 in a second horizontal row. Stern teaches that bipolar pairs can be formed between various combination of these electrodes resulting in both pairs within a row and pairs formed across two rows. See Ex. 1033, 12:61–13:2 (explaining that “bipolar operation is not limited to [electrode] 220-224 and 222-226 pair couplings” because pairs could also be formed across rows, e.g., between electrodes 220 and 222). Stern’s Figure 19 likewise depicts a plurality of electrodes arranged in two rows. See Ex. 1004 ¶¶ 71–74 (Dr. Martin explaining that the physical arrangement in Figure 19 is complementary to the control structure in Figure 15 and that there are two rows regardless of which electrodes are paired). In bipolar operation, each of these figures depicts “two rows of bipolar electrode pairs” as recited in element 1[a] because there are two rows comprising multiple pairs.15 Patent Owner’s narrower interpretation of the phrase “two rows of bipolar electrode pairs” is not consistent with the intrinsic record. According to Patent Owner and Dr. Bikson, it is not enough that there are two rows of electrodes comprising multiple pairs––rather each row must itself contain multiple pairs. See Resp. 23; Ex. 2001 ¶ 75 (“A row of only two electrodes is not a row of bipolar electrode pairs because a row of only two electrodes has at most a single pair (not multiple pairs).”). As Petitioner points out, Patent Owner’s interpretation assumes that the “s” in “pairs” modifies each row individually, rather than the recited “rows” collectively. But the claim 15 In reply to Patent Owner’s argument that there must be at least three electrodes in a row for that row to contain multiple pairs, Petitioner shows that Stern also discloses rows with three or more electrodes. Ex. 1083 ¶¶ 36– 40; Ex. 1097 ¶¶ 39–41 (identifying rows with three or more electrodes in Stern’s Figures 4a and 19). We need not address that showing in detail because, as explained below, element 1[a] does not require that there be more than one pair in each row. language does not specify that each row has pairs (plural). Rather, given its plain meaning, “two rows of bipolar electrode pairs” encompasses an arrangement like that shown in Stern’s Figure 15. Ex. 1097 ¶ 30 (Dr. Martin explaining that “what is required is (1) more than one bipolar electrode pair that are (2) spread across rows”). This broader understanding is confirmed by the specification of the” slip op. at 35
Patent outcomesUS 11,241,271 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,241,271 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-01334 · APJ David C Mckone · IPR · Final written decision
Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 6:18–26. Petitioner argues that “an ATM is not a party to a transaction—the parties are the user and the bank, and the ATM is the mechanism through which the bank’s accounts are accessed.” Reply 5–6 (citing Ex. 1026 ¶ 13). Similarly, Petitioner argues, a file “is not a principal party to a transaction—rather the user and the provider of the file (e.g., a vendor) are the parties.” Id. at 6 (citing Ex. 1026 ¶ 13). Petitioner makes similar arguments for financial accounts, savings accounts, medical records, and insurance information. Id. (citing Ex. 1001, 6:18–26; Ex. 1026 ¶ 14). We agree with Petitioner. The specification, here, gives several examples where the application being accessed is not, itself, a party to the transaction, but rather an asset of one of the parties or the mechanism by which the parties transact.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term ‘access message’ to mean ‘a signal or notification enabling or announcing access.’” PO Resp. 7. However, Patent Owner argues that applying “access message” to Ludtke’s transaction confirmation “fails to account for the claim term ‘access to an application.’” Id. at 7–8. Rather, Patent Owner argues, a transaction confirmation “is a message announcing that a transaction has been completed.” Id. at 8. Patent Owner contends that “[t]he plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object wherein the object is the claimed application.” Id. (citing access, MERRIAM-WEBSTER DICTIONARY (available at https://www.merriam-webster.com/dictionary/access)). Here, Patent Owner appears to retreat on its agreement that “access message” can include a signal “announcing” access, and suggests that we limit “access message” to a signal “enabling” access. However, Patent Owner then returns to its agreement, stating that “[i]t would be improper to construe ‘access message’ as something other than a signal or notification enabling or announcing a user’s access to (ability to enter, communicate with, or make use of) an application.” Id.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for petitioner
“As explained above, a person of ordinary skill in the art would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent, while additional education could substitute for professional experience, and significant work experience could substitute for formal education. Mr. Carrothers claims to be “a financial services and retail leader with approximately thirty years of experience working in a variety of leadership roles in retail payments.” Ex. 2018 ¶ 1. He lists professional and consulting experience with retail payments, operational and risk management of a credit card portfolio, and payment insurance and acceptances in stores and online. Id. ¶¶ 1–5. His Curriculum Vitae (Ex. 2018, Appendix A) lists education including a Bachelor of Business Administration and a Master of Business has either the technical education or the technical experience to be a person of ordinary skill in the art. In response to Petitioner’s challenge to Mr. Carrothers’ qualifications, Patent Owner does not contend that Mr. Carrothers is at least a person of ordinary skill in the art.7 Rather, Patent Owner argues that “[t]o put the asserted portions of Ludtke in context, Mr. Carrothers provided testimony regarding the processing of credit and debit card payments with respect to online transactions based on his expertise and experience with retail payments.” Sur-reply 1. Patent Owner uses Mr. Carrothers’ testimony to support arguments regarding the timing and parties to the communications generated by Ludtke’s system, and to support arguments that the TPCH is a party to Ludtke’s transactions. PO Resp. 13–17 (citing Ex. 2018 ¶¶ 20–31). We find that Mr. Carrothers testifies on technical details regarding unpatentability, and that a declarant testifying as to such subject matter should have at least ordinary skill in the art. Thus, Mr. Carrothers’ testimony is entitled to no weight. See Kyocera, 22 F.4th at 1376–77.” slip op. at 39
Patent outcomesUS 8,886,954 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,886,954
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.