- Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62
Patent outcomesUS 11,336,832 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,336,832 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · Nov 26, 2025 · IPR2024-00984 · APJ Nabeel U Khan · IPR · Final written decision
Claims 6 and 7 are unpatentable as obvious over Meulen and Chao; claim 1 was not shown unpatentable because Meulen does not disclose transforming an image captured by its camera.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art in the relevant field “would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras,” or alternatively “would have four years of experience working on image or video processing, or digital cameras.” Pet. 6. Petitioner further argues that an “advanced graduate degree” may “make up for the work experience.” Id. (citing Ex. 1002 ¶¶ 33–34). “Patent Owner applies Petitioner’s proposed level of skill.” PO Resp. 4–5 (citing Ex. 2027 ¶¶ 19–20). We adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’413 patent and the cited prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“From the outset we note that the words of the claim recite “non- uniformly shift[ing] the pixels” and do not recite a “non-linear” transformation. This favors Petitioner’s position, which is based directly off the definition of “non-uniform,” over Patent Owner’s position, which substitutes “non-linear” for “non-uniform.” Generally, then, we would determine the ordinary and customary meaning of the claim term in the context of the entire Specification. Here, however, the ʼ413 patent does not mention “uniform” or “non-uniform” shifting of pixels anywhere except in the claims. The Specification, therefore, provides limited guidance, by itself, as to the ordinary and customary meaning of the term. Nonetheless, even reviewing the portions of the Specification cited by the parties, we see no clear or unambiguous effort to limit the challenged claims to require only non-linear transformations in which the pixels to which a transformation is applied do not have the same amount of shift. is not non-linear. Pet. Reply 1. Specifically, Petitioner argues that the center circle of Figure 2B maintains the original circular shape after the transformation is applied to the image which contradicts Patent Owner’s argument that no two pixels will have the same amount of shift. Pet. Reply 1–2. We agree. In Figure 2B of the ʼ413 patent, the center of the image is chosen to be the region of interest. Ex. 1001, 4:19–21. After the input image goes through linear scaling (step 204) and then non-linear warping (step 206) the circles become more vertically compressed as they approach the top and bottom edges and more horizontally stretched as they approach the left and right edges. Id. at 4:22–30. But “the center circle is fully corrected so that it maintains the original circular shape of the corresponding circle in the input image 212.” Id. at 4:23–25. This means that at least some pixels, such as those of the center circle, undergo the same amount of shift after being transformed.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“readable instructions” of claims 1 and 2 must occur in a particular order. Specifically, Patent Owner argues that the step of “determine a portion within the input image” must occur after “obtain[ing] an image” and before “apply[ing] a transformation to the input image.” PO Resp. 17 (citing Ex. 2027 ¶ 59). Petitioner argues, on the other hand, that the specification does not require such an order and, in fact, describes an embodiment where such an order is not followed. Pet. 3. We determine that the “determine a portion within the input image” step does not need to occur after the “obtain an image” step and before the “apply a transformation to the input image” step. As Patent Owner itself points out, claims 1 and 2 are apparatus and system claims respectively, and an ordering of the limitations of such claims is not necessary. PO Resp. 17. Even if we were to treat the apparatus and system claims as reciting the steps of a method, “as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). We see nothing in the claims that would cause us to break this general rule. Patent Owner argues that the claims imply a “specific order because the ‘determine a portion’ requirement operates on ‘the [obtained] input image’ and defines the ‘portion’ that is necessary for the 23; Ex. 2027 ¶ 59). Although the steps are recited in a specific order in the claim, as they necessarily must be, the claim does not expressly specify that the certain steps must occur before or after other instructions, nor does logic imply such a requirement. For example, if certain characteristics of the image are known before the image is obtained (e.g. the size, dimensions, resolution, aspect ratio, or content etc.) the determination of the portion of the image could be made before the image is obtained. These characteristics may be based on the specific device taking the image or the subject matter of the image, both of which may be known before the image is captured or obtained. It is, therefore, not necessary that the image be obtained in order for a portion of the image to be determined. Similarly, we do not find the written description to expressly or implicitly specify an order the claimed step of “determine a portion of the input image.” For example, the written description of the ʼ413 patent states that in Figure 2B “the center of the image is chosen to be the region of interest that is most fully corrected and the distortion increases in each direction as the frame boundary is approached.” Ex. 1001, 4:19–22. Patent Owner emphasizes that this disclosure implies that an input image is obtained before the center portion is chosen. PO Resp. 19 (citing Ex. 1001, 3:63–64, 4:19–22). But the description of this embodiment does not expressly recite an order. For example, the description of Figure 2A explains that “an input image is obtained” in step 202, “the image is then scaled” in step 204, and a “non-linear warping is then applied” in step 206. Ex. 1001, 3:63–4:3. This description does not mention “determin[ing] of a portion of the image” as a separate step or as part of the listed steps, and therefore, does not specify an order in which this step must occur. is configured so that some areas of the image are fully corrected geometrically, while some other areas are distorted. . . . [T]he center of the image is chosen to be the region of interest that is most fully corrected and the distortion increases in each direction.” Id. at 4:17–19. This excerpt from the ʼ413 patent, which the Patent Owner specifically relies on (PO Resp. 19), also does not specify an order in which the determination step (choosing of the region of interest) takes place. Moreover, because the ʼ413 patent states that the warp module is configured so that some areas are fully corrected while others are not, the determination step could take place at the time the warp module was configured, presumably before the image was obtained. Finally, the ʼ413 patent states that “in the case, of video, the area may dynamically change between images (e.g. to follow a moving object).” Ex. 1001, 4:34–36. Patent Owner argues that this description “requires first obtaining the image in order to locate the object that is being followed.” PO Resp. 19–20. This embodiment is related to the case of video or a moving object, which the challenged claims do not mention. We, therefore, decline to limit the scope of the claim based on this embodiment. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Having reviewed the parties’ arguments and cited evidence we determine Petitioner has established, by a preponderance of the evidence, that a POSITA would have been motivated to combine Meulen and Chao. For example, Petitioner argues that “[i]t would have been obvious that when performing image scaling, pixels from the input to output positions are shifted based on a scaling factor.” Pet. 91. Meulen teaches scaling but does not provide the details regarding scaling. E.g., Ex. 1007, 1:55–56, 4:37–49. We agree that in light of Meulen’s disclosure of scaling, a POSITA would have looked to other references, such as Chao, for further details on how to perform scaling. Dr. Katsaggelos provides credible support, testifying that “Meulen mentions ‘compression and/or scaling,’ and provides details on how to perform compression. But Meulen does not disclose the details of how to perform scaling. A POSITA when faced with Meulen and having the knowledge about scaling would have been motivated to turn to a prior art reference that discloses the details of scaling.” Ex. 1002 ¶ 262. Patent Owner argues that Petitioner provides no motivation to combine other than asserting that it involves combining prior art elements. PO Resp. 35 (quoting Pet. 92). As explained above, however, Petitioner does more than just assert that the motivation involves combining prior art elements. Instead, Petitioner explains that Meulen discusses both compression and scaling, and provides details regarding compression but does not provide details on how to scale. Pet. 91–92; Ex. 1002 ¶¶ 262–262. Thus, Meulen teaches that scaling was a known technique. See Hybritech, (“a patent need not teach, and preferably omits, what is well known in the art”). Dr. Katsaggelos testifies that, in this situation, a POSITA would have looked to Chao for details regarding scaling. Ex. 1002 ¶¶ 262–263. We determine this establishes, by a preponderance of the evidence, that a POSITA would have had reason to combine Meulen’s teachings with Chao. Patent Owner draws a distinction between Meulen and Chao, arguing that “Meulen is concerned with modifying content from a media source to be displayed on a device’s screen while Chao, by contrast, is directed to changing the aspect ratio of a document intended for printing.” Id. at 36 (citing Ex. 2027 ¶¶ 89–90). Patent Owner’s argument is contradicted, however, by Chao’s disclosure which states that “after all the background and foreground elements in the image have been resized . . . [t]he image may be output by displaying the image on or as part of: a display screen such as a computer monitor, camera screen, printer screen, printed page, projected image, or the like.” Ex. 1008 ¶ 32. Patent Owner argues that Meulen’s system avoids distortion near the middle where the user’s focus is more likely to be, while Chao, on the other hand, is directed to avoiding distortion of stylized borders on differently sized pages. PO Resp. 36–37 (citing Ex. 1006, 1:26–29; Ex. 1008 ¶¶ 1, 25; Ex. 2027 ¶¶ 91–92). This argument reads the prior art too narrowly and does not address Petitioner’s combination. Petitioner does not rely on Chao for its teaching of avoiding distortion near the borders of the image, but rather on its teaching of scaling the image while maintaining the design intent of the original image. Ex. 1008 ¶ 22; Ex. 1014 ¶ 67. Thus, Petitioner is applying Chao’s techniques of scaling (regardless of where the area of 92. Finally, Patent Owner argues that Chao’s approach of stretching/shrinking only the background and uniformly scaling entire foreground objects is suitable for graphic design but incompatible with Meulen which is concerned with adapting externally derived media source content for display on a fixed size screen. PO Resp. 37–38 (citing Ex. 2027 ¶ 93). We disagree with Patent Owner’s argument because it does not address Petitioner’s combination. Petitioner relies on Chao’s teaching of stretching/shrinking of background elements and applies that stretching/shrinking to Meulen’s images displayed on its screen. Pet. 91–92 (citing Ex. 1008 ¶¶ 28, 63; Ex. 1002 ¶ 263). The fact that Chao applies its teaching to graphic design does not prevent a POSITA from applying those teachings to Meulen’s media content displayed on its screen.” slip op. at 20
Patent outcomesUS 10,015,413 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,015,413 - Viant Techology LLC v. Intent Iq, LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2024-00422 · APJ Scott B Howard · IPR · Final written decision
The Board held claims 1–152 unpatentable based on the asserted obviousness grounds and struck Section II of Petitioner’s reply claim-construction brief.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Decision issues pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “Contracted to Display a TV Ad Petitioner argues that the term means “contracted to display any form” slip op. at 14
- Strike new argumentGranted
“FURTHER ORDERED that Section II of Petitioner’s Reply Claim Construction Brief is stricken from the record; and” slip op. at 80
Patent outcomesUS 7,861,260 unpatentableClaim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Viant Technology, Inc. v. Intent Iq, LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2025-00128 · APJ Scott B Howard · IPR · Final written decision
The Board held claims 1–152 unpatentable based on obviousness grounds and struck Section II of Petitioner’s Reply Claim Construction Brief.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“1. “Contracted to Display a TV Ad Petitioner argues that the term means “contracted to display any form” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“d) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Baig, Costa, and Zwicky. 5. Analysis of Claims 2–5, 7–9, 12, 15, 17, 21, 22, 24, 26–28, 31, 32, 34, 37, 42, 44, 53, 54–58, 61, 62, 69, 71–80, 83, 84, 86–88, 91, 94, 96, 100, 101, 103, 106, 116–119, 122, 125, 128, 135, 137– 145, 147, 148, 151, and 152 Petitioner argues that the combination of Baig, Costa, and Zwicky teaches the limitations recited in claims 2–5, 7–9, 12, 15, 17, 21, 22, 24, 26–28, 31, 32, 34, 37, 42, 44, 53, 54–58, 61, 62, 69, 71–80, 83, 84, 86–88, 91, 94, 96, 100, 101, 103, 106, 116–119, 122, 125, 128, 135, 137–145, 147, 148, 151, and 152 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 28–60; 422Pet. 29–51. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Lett. See Pet. 28–60; 422Pet. 29–51. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own. Patent Owner does not separately address those claims. See PO Resp.; 422PO Resp. Instead, Patent Owner only relies on the arguments discussed above for claim 1. See PO Resp. 13–16; 422PO Resp. 13–16. For the same reason as discussed above in Section II.D.4(b), we do not agree with Patent Owner’s arguments regarding the reason to combine the references. Accordingly, Petitioner has shown by a preponderance of the evidence” slip op. at 50
- Strike new argumentNew argument disregardedGranted
“F. Sua Sponte Striking Section II of Petitioner’s Reply Claim Construction Brief Our order allowing post-hearing claim construction briefing stated that “[t]he parties may not address any issues besides claim construction.” Paper 38, 1. Despite that order, Section II of Petitioner’s Reply Claim Construction Brief addresses obviousness under Patent Owner’s proposed construction. See Pet. Reply Post-hearing Br. 2–3 (Titled: “The Petition’s Obviousness Theory Renders Claims 121 and 146 Obvious Even Under Patent Owner’s Improper Construction.”). Because the section is in violation of our order, we sua sponte strike that section. See 37 C.F.R. § 42.12.” slip op. at 74
Patent outcomesUS 7,861,260 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Viant Techology LLC v. Intent Iq, LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2024-00421 · APJ Scott B Howard · IPR · Final written decision
The Board held claims 1–152 unpatentable over the asserted prior art and struck Section II of Petitioner’s reply claim construction brief.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“d) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a” slip op. at 50
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “Contracted to Display a TV Ad Petitioner argues that the term means “contracted to display any form” slip op. at 14
- Strike new argumentGranted
“F. Sua Sponte Striking Section II of Petitioner’s Reply Claim Construction Brief Our order allowing post-hearing claim construction briefing stated that “[t]he parties may not address any issues besides claim construction.” Paper 38, 1. Despite that order, Section II of Petitioner’s Reply Claim Construction Brief addresses obviousness under Patent Owner’s proposed construction. See Pet. Reply Post-hearing Br. 2–3 (Titled: “The Petition’s Obviousness Theory Renders Claims 121 and 146 Obvious Even Under Patent Owner’s Improper Construction.”). Because the section is in violation of our order, we sua sponte strike that section. See 37 C.F.R. § 42.12.” slip op. at 74
Patent outcomesUS 7,861,260 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,861,260 - Motorola Mobility LLC v. Largan Precision Co., Ltd.No claims unpatentablePTAB · Jan 24, 2024 · IPR2022-01210 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–27 were not shown unpatentable because Petitioner did not establish a reason to combine Chung Embodiment 11 or 12 with Sekine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Dr. Bentley, testifies that “a [POSITA] around the time of the invention would have had a bachelor’s degree in physics or optics, and at least three years of experience in the field of optical design, or its equivalent experience.” Ex. 2001 ¶ 28. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill. We note, however, that the two proposed levels of ordinary skill are similar and our analysis and conclusions would not change under Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction, “and only to the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner does not propose a specific construction for any terms and instead argues that “no claim terms require specific construction to resolve the unpatentability issues presented” in their Petition. Pet. 12. Patent Owner also does not propose any specific constructions in their Response, nor does their declarant, Dr. Bentley. We determine that no explicit constructions are required to resolve the dispute between the parties.” slip op. at 13
- Exclude
“G. Motion to Exclude Patent Owner filed a Motion to Exclude the portions of Mr. Aikens declaration testimony present in Exhibit 1003 and Exhibit 1045 relating to or arising from “lens design studies, simulations, or optimizations using Zemax lens design software, or otherwise rely[ing] on undisclosed facts and data.” Paper 45, 1. Because we do not rely on any of this evidence in this decision in a manner adverse to Patent Owner, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 44
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“F. Motion to Amend and Revised Motion to Amend As we determine that motivation to combine has not been shown by a preponderance of the evidence, we dismiss the Motion to Amend and Revised Motion to Amend pursuant to 35 U.S.C. § 316(d) because they were contingent upon our finding a claim of the ’519 patent to be unpatentable. MTA 1; Revised MTA 1.” slip op. at 44
Patent outcomesUS 9,696,519 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,696,519 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.Some claims unpatentablePTAB · Jun 20, 2023 · IPR2022-00236 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1, 10–13, and 21 are unpatentable over Osanai and Tokuhiro; claims 2, 6, and 22 were not shown unpatentable because key limitations were not established.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of ordinary skill, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. Thus, we determine that a person of ordinary skill in the art would have been a person with an advanced degree in electrical or computer engineering and two years working in the field, or a bachelor’s degree in such engineering disciplines and three years working in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“constructions” from the related proceedings. Pet. 10 (citing Ex. 1019). Patent Owner states that it does not seek construction of any terms in the ʼ035 patent and “agrees with Petitioners that all terms of the ʼ035 Patent have their plain and ordinary meaning.” PO Resp. 13. We determine no terms need to be construed to resolve the disputes between the parties.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“determine that Petitioner has sufficiently demonstrated that one of ordinary skill would have been motivated to combine Osanai and Tokuhiro in the way proposed by Petitioner. Petitioner provides sufficient support for its allegation that one of ordinary skill would have been motivated to combine Osanai and Tokuhiro. For example, Dr. Alpert credibly explains that “it would have been obvious to use Tokuhiro’s teaching in Osanai’s data register buffer to achieve the same benefit achieved by Tokuhiro’s device, i.e., reduce the number of steps needed to determine the read delay by basing that determination on timing information determined during write leveling.” Ex. 1003 ¶ 126. This is because, as Dr. Alpert explains, Tokuhiro’s leveling technique uses timing information determined during write leveling for write operations to determine the delay for subsequent read operations. Id. ¶ 122 (citing Ex. 1006, 3:16–26, 16:1–28). Thus, Tokuhiro’s technique reduces the number of steps because it uses previous measurements and calculations from prior write leveling instead of making additional measurements and calculations to determine the delay for read operations. As for reducing power consumption and circuit area, Tokuhiro itself states “[a]ccordingly, the delay times Dt1 and Dt2 from the input of the two signals to the output thereof can be efficiently set without increasing the 24:26–29. Dr. Alpert provides credible testimony that Tokuhiro’s leveling technique allows for “using a common structure for implementing write and read delays [that] would improve power consumption for Osanai.” Ex. 1003 ¶ 127 (citing Ex. 1006, 21:15–24:42, Figs. 16, 17). We determine that evidence from Tokuhiro and Dr. Alpert sufficiently demonstrates that there would be benefits from using Tokuhiro’s technique in combination with Osanai. In terms of Petitioner’s argument that combining Tokuhiro with Osanai would improve signal fidelity, decrease timing skew among components and lower the load perceived by the memory controller (Pet. 40–41), we agree with Patent Owner that the reasoning provided is somewhat conclusory. The portions of Tokuhiro cited in support of this argument do not mention signal fidelity or lowering load, although they do mention adjusting for timing skew. See Ex. 1006, 1:63–2:28. Overall, however, considering the other two reasons provided, we determine Petitioner has sufficiently demonstrated that a person of ordinary skill would have been motivated to combine Osanai and Tokuhiro.” slip op. at 41
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“demonstrated by a preponderance of the evidence that Osanai and Tokuhiro teach the limitations of claim 1 and that claim 1 would have been obvious over the combination of Osanai and Tokuhiro.” slip op. at 43
Patent outcomesUS 9,824,035 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,824,035 - Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentablePTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8
- BurdenDecided for patent owner
“Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner
“attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29
Patent outcomesUS 8,693,206 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,693,206 - Tripadvisor, LLC v. Mimzi, LLCAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01080 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–4 and 7–18 are unpatentable over Roth and Ng; claims 1, 2, and 4, 7–18 are unpatentable over Roth and Fortescue; claim 3 and claims 1, 10, and 16 are not shown unpatentable on …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention, “would have (i) had a bachelor’s degree in Computer Science, Electrical Engineering, Computer Engineering, or a closely related field, and about 1–2 years of practical experience in that field; or (ii) had a master’s degree in Computer Science, Electrical Engineering, Computer Engineering or a closely related field.” Pet. 12 (citing Ex. 1004 ¶ 55). Patent Owner argues “POSITA must have some familiarity with social network databases (the technology at issue) in addition to Petitioner’s proposed general experience in Computer Science, Electrical Engineering, or Computer Engineering.” PO Resp. 15. On this record, we agree with Petitioner’s proposed definition of person of ordinary skill in the art, and adopt it for purposes of this Decision. Although the claims of the ʼ981 Patent recite searching a social network database, we find the fields of Computer Science, Electrical Engineering, and Computer Engineering would provide knowledge related to social networks and database search at a level commensurate with the disclosure of the ʼ981 Patent, and, thus, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art. We note, however, that our analysis below” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Having considered the parties’ arguments and the fully developed trial record, we do not agree with Patent Owner’s proposed construction. The ʼ981 Patent describes metadata as data that includes “date data, time data, name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981 Patent list several examples of metadata, including, “Date of call, dictation or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone # other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,” “Location start,” “Location time 1,” “Location at end,” “Loc. Start synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 Patent describes metadata broadly as encompassing a variety of data associated with various uses of the mobile device, such as calls, texts, dictation, photos, and the like. Patent Owner does not provide sufficient evidence that the word “associated” means “attached” in the context of the claim. The ʼ981 Patent does not use the term “attached” anywhere to describe the metadata associated with the spoken request, nor has Patent Owner identified the use of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1 and 2 of the ʼ981 Patent as supporting its construction but Figures 1 and 2 show that a time offset and location may be added to the transcript for each the time and location information. The claim, however, recites that metadata be associated with the spoken request, not that it be added to the transcript. Ultimately, we fail to see how these embodiments show that time and location are attached to the spoken request. In light of the parties’ arguments regarding unpatentability, we determine that we need not further construe the term “metadata associated with the spoken request.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ arguments and evidence and the fully developed trial record, we do not agree with Patent Owner’s construction. The ʼ981 Patent states that it discloses “[a] system and method for providing social-network (Centralized Community Search database)—provided outputs to a mobile-electronic-device user in response to the user’s spoken request.” Ex. 1001, Abstract. The ʼ981 Patent explains that a user may wish to transmit their “text messages, photos, videos, call and voice annotations or synopsis (with speech-recognized text and location data), to a Centralized Community Search database” and that the user may designate this content to be public and “be shared with anyone via the Internet.” Ex. 1001, 14:64– 15:6. The ʼ981 Patent calls the public sharing of information as “Location Blogging.” See Ex. 1001, 15:1–6. The ʼ981 Patent explains that the publicly shared content contributed to the Centralized Community Search database may include information such as “a review of a restaurant or business.” Ex. 1001, 15:7–15. The Centralized Community Search database “may be searched or mined based on social network or type of information, restaurant location.” Ex. 1001, 15:22–26. Although the ʼ981 Patent describes information being stored in a centralized community search database, it does not restrict the community in any way nor does it describe the database as storing interpersonal relationships between community members. We find insufficient support in the ʼ981 Patent for such a limitation. Moreover, we find no support for Patent Owner’s argument that a social network database has a specific structure with relational tables and links between tables and between individuals, nor any support for the database being dynamic and two-way. We therefore decline to import such limitations into the claim. For purposes of this Decision, we do not consider whether the term “social network” should be given patentable weight. As explained below, even if we give the term patentable weight, when properly construed, the relied upon references teach a social network database. The ʼ981 Patent describes a centralized database that stores information, such as text messages, photos, videos, road warnings and restaurant reviews, accessible by anyone on the Internet, without disclosing or requiring the storage of interpersonal relationships. In light of the parties’ arguments regarding unpatentability, we need not further construe the term “social network database.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner has demonstrated that one of ordinary skill in the art would have been motivated to combine Roth with Fortescue. Both references relate to performing internet searches and both discuss searching for restaurants. On this record, we are persuaded by Petitioner that a person of ordinary skill would have considered adding Fortescue’s social network elements and the ability to rank based on various factors to benefit Roth’s that a skilled artisan would have been motivated to modify Fortescue to add Roth’s speech to text feature for additional convenience for the user.” slip op. at 29
Patent outcomesUS 9,128,981 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,128,981
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.