- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentablePTAB · Nov 6, 2025 · IPR2024-00867 · APJ Kevin C Trock · IPR · Final written decision
Claims 11, 12, 16, 17, 19, 20, and 84 are unpatentable as obvious over Nozaki and Haitani, alone or combined with Graham or Kim.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ descriptions of the level of skill in the art are very similar, with only a slight difference in the number of years of work experience suggested. Petitioner states that “[a]lthough the experts propose slightly different POSITA definitions, the differences are immaterial to the analysis here.” Pet. Reply. 1. Patent Owner does not believe the two definitions are materially different, and states that “the arguments herein do not change under either definition. PO Resp. 8. Petitioner’s description of a person of ordinary skill appears to be consistent with the technical complexity of the subject matter described in the ’848 patent. This understanding is supported by the testimony of Petitioner’s declarant, Dr. Bederson, who states that he is “well acquainted systems and methods described in the ’848 patent.” Ex. 1005 ¶ 36. Accordingly, we continue to use Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. B. Claim Construction” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“the meaning of the claim term “mode” as it is used in the ’848 patent and as one of ordinary skill in the art would understand it at the time of the invention. First, the parties do not necessarily disagree as to the meaning of the term “mode.” Patent Owner asserts that a person of ordinary skill in the art “would understand ‘mode’ to mean “an operational state that a system has been switched to.” PO Resp. 13. Petitioner “do[es] not necessarily object to the concept of a ‘mode’ as an operational state,” but does object to how Patent Owner applies the term. Pet. Reply 1. Petitioner objects to Patent Owner’s “application of its construction,” which, Petitioner argues, “is far narrower than the words alone suggest.” Id. Second, the intrinsic evidence, including the claims and the ’848 specification, makes it readily apparent what the ordinary and customary meaning of the term “mode” would be to one of ordinary skill in the art at the time of the invention. Based upon our consideration of the claims and the ’848 specification, we find that the term “mode,” as it is used by the ’848 patent, means a “state,” “condition,” or “operational state” of a recording device, such as a video camera, that is selected by a user and may include a selection function using threshold values.” slip op. at 19
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We disagree with Patent Owner. In determining obviousness, the scope of relevant prior art “necessarily encompasses not only the field of the inventor's endeavor but also any analogous art.” In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). A reference qualifies as prior art for a determination under § 103(a) when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A reference is analogous to the claimed invention when it is from the same field of endeavor, regardless of the problem addressed. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Similarity in the structure and function of the invention and the prior art is indicative that the prior art is within the inventor's field of endeavor.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here, Petitioner provides a persuasive rationale as to why a person of ordinary skill in the art would combine the teachings of Nozaki, Haitani, and Graham as described in the Petition. For example, Petitioner explains that a person of ordinary skill in the art would have recognized that Nozaki’s facedetection data could be used as an additional method by which to identify Figure 5 of Nozaki could be configured as a scrollable list of keyframe data similar to Graham. Pet. 37–38 (citing Ex. 1005 ¶ 141). Petitioner also explains that a person of ordinary skill in the art would have been motivated to implement this modification to improve the efficiency of searching for specific moments within a long video file. Pet. 38 (citing Ex. 1005 ¶ 142). Petitioner also explains that Graham’s video segmenting methods address this need and could have been easily implemented in the Nozaki device. Pet. 38 (citing Ex. 1005 ¶ 142). Dr. Bederson testifies that such implementation would have been within the skill of a person of ordinary skill in the art. Ex. 1005 ¶ 142. Accordingly, based upon the complete record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill in the art at the time of the claimed invention would have had a reasoned basis to combine the teachings of Nozaki, Haitani, and Graham in the manner described and would have had a reasonable expectation of success in that endeavor.” slip op. at 64
Patent outcomesUS 10,176,848 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,176,848 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentablePTAB · Oct 30, 2025 · IPR2024-00828 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1, 2, 4–7, and 9–14 are unpatentable as obvious over the Rogers-based combinations with Rosenberg, Rekimoto, and, for claims 9–14, Miyazawa.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“13 The Court was very critical of Dr. Wobbrock’s testimony in the related district court case. See generally Ex. 1026 (September 18, 2025 Order). With regard to the ’086 patent, the Court found that Dr. Wobbrock’s testimony was not based on any record evidence (id. at 7, 9), arbitrary (id.), contrary to the evidence (id. at 7–8), unjustified (id. at 8), ipse dixit (id. at 9), conclusory (three times) (id.), insufficient to support a jury verdict (three times) (id. at 9, 27), untethered from the Specification (three times) (id. at 28, 30, 31), inconsistent (id. at 29), insufficient to support his opinion (id. at 29–30), unsupported (id. at 30), and not to be credited by a reasonable jury (id. at 31). We have considered this criticism of Dr. Wobbrock’s testimony in view of the September 16, 2025, Memorandum to the Members of the Patent Trial and Appeal Board on the subject of “PTAB consideration of prior findings of fact and conclusions of law” (available at: https://www.uspto.gov/sites/default/files/documents/Memo_re_prior_finding s_of_fact_and_conclusions_of_law_9_16_25.pdf?utm_campaign=subscripti oncenter&utm_content=&utm_medium=email&utm_name=&utm_source=g ovdelivery&utm_term=) and in light of the case law (see, e.g., N.L.R.B. v. Pittsburgh S.S. Co., 337 U.S. 656, 659 (1949) (“[I]n the determination of litigated facts, the testimony of one who has been found unreliable as to one issue may properly be accorded little weight as to the next.”). We have similarly found Dr. Wobbrock’s testimony to be contrary to the plain and ordinary meaning of the claims, untethered from the Specification, unsupported by the evidence, inconsistent, arbitrary, and conclusory. We accord the testimony of Dr. Wobbrock little or no weight. We view the testimony of Petitioner’s expert, Dr. Nielson, as more credible and persuasive as it tracks more closely with the ’086 patent and the cited art. EcoFactor, Inc. v. Google LLC, 137 F.4th 1333, 1339 (Fed. Cir. 2025) (quoting Daubert v. Merrell Dow Parms., Inc., 509 U.S. 579, 597, 589 (1993) (“The Supreme Court has explained ‘that the trial judge plays a “gatekeeping role,’” ‘through which it must “ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.’”)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“with touch interfaces.” PO Resp. 8 (citing Ex. 2005 ¶¶ 76–77). Although there are minor differences in these definitions of the level of ordinary skill in the art, the parties agree that this issue is not disputed. Tr. 11:24–26 (Petitioner’s counsel); 43:16–22 (Patent Owner’s counsel indicating agreement with Petitioner’s definition); see also Pet. Reply 1 (“The experts agree on the definition of ordinary skill in the art (‘POSITA’).” Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner as it is not disputed and is consistent with the ’086 patent and the asserted prior art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find no support in the language of claim 1 for construing the “first registering mode” and the “second registering mode” as “operating modes,” or as “different operational states,” or “sub-operating modes of the ‘said registering mode’” as contended by Patent Owner. There is no express statement in claim 1 that the “first registering mode” and the “second registering mode” are “operating modes,” or are “different operational states,” or are “sub-operating modes of the ‘said registering mode.’” The language of claim 1 is clear that the only two “operating modes” explicitly recited in claim 1 are the “identification mode” and the “registration mode.” Claim 1 recites that these two “modes” are “operating modes,” but does not recite that the “first registering mode” and the “second registering mode” are “operating modes.” The language of claim 1 cannot be read to include the requirements that the “first registering mode” and the “second registering mode” are “operating modes,” or are “different operational states,” or are “sub-operating modes of the ‘said registering mode.’” Rather, we agree with Petitioner that the language of limitation 1c that specifically refers to the “registering mode” as an “operating mode” and the language of limitation 1f that refers to the “first registering mode” and the “second registering mode” as “mode[s] for inputting input information” that are “provided in said registering mode” contradicts Patent Owner’s proposed construction that would require the “first” and “second registering mode[s]” to be “different operational states.” The plain and ordinary meaning of the language of claim 1 provides that the “first registering mode” and the “second registering mode” are “mode[s] for inputting input information” that are “provided in said registering mode” which is one of the two delineated “operating modes.” Both “first” and “second” “registering mode[s]” ”for inputting input information” are recited as “provided in said registering mode,” a single “operating mode.”17” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Both references are directed to allowing users to input information via touchsurface technology and are analogous art to the ’086 patent. . . . [A] POSITA would have found Rogers and Rosenberg to be compatible because of the technical similarity of their teachings, and a POSITA would have further recognized that Rosenberg’s finger orientation disclosures, applied to Rogers’ graphical passcode disclosures, would facilitate a “natural and intuitive” means of implementing the teachings of Rogers. A POSITA therefore would have been motivated to look to Rosenberg to improve Rogers, and vice-versa. . . . A POSITA . . . would have considered the disclosures in Rosenberg and been motivated to modify Rogers’ “large fingertip and a small stylus tip” example so that it instead used the “natural and intuitive” finger pad versus finger end distinction discussed in Rosenberg. A POSITA would have found this modification to be a simple substitution of elements well known in the art and would have had a reasonable expectation of success in achieving the benefits disclosed in Rosenberg by making the modification, which involved only routine skill. . . . [A]dding finger end and finger pad touch detection to Rogers would involve no more than applying a known technique (i.e., finger end and finger pad touch detection/distinction as taught by Rosenberg) to a known device ready for improvement (Rogers’ apparatus having “large fingertip and a small stylus tip” capabilities) to yield predictable results (simple to use touch screen interface with multipoint targeting and multi-finger gesturing). . . . It also would have been obvious to combine Rogers with Rosenberg because both references disclose touch screen interfaces that detect a contact area of a finger. . . . A POSITA would have considered Rosenberg’s disclosures and been motivated to modify the “graphical passcode” features of Rogers so that the disclosed device is capable of detecting information input by a pad or end of a finger, because it would provide a “generally easily distinguishable” basis upon which to program the device disclosed in Rogers to detect a “measurable parameter” based on “contact area.” A POSITA would have further recognized that these features of Rogers and Rosenberg could be successfully combined because both references teach a “calibration” mode in which the user trains the device to recognize a specific range of input parameters that allows for some variation in input while remaining within acceptable tolerances. . . . A POSITA would have had a reasonable expectation of success in modifying Rogers in this manner for at least the same reasons.” slip op. at 60
Patent outcomesUS 8,982,086 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,982,086 - Microchip Technology Inc. v. Aptiv Technologies AGAll claims unpatentablePTAB · Jul 30, 2025 · IPR2024-00230 · APJ John D Hamann · IPR · Final written decision
Claim 1 is unpatentable as obvious over Chang and Chang II; the Board did not reach the Chang, Chang II, and Chutorash ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner and find that “computer network protocols” is correct in light of the ’072 patent’s disclosure and claim 1. In particular, the ’072 patent teaches that it “generally relates to [USB] connectivity between, for example, mobile consumer devices and vehicle electronic systems.” Ex. 1009, 1:21–23. And the ’072 patent’s teachings focus on common network components (e.g., hub, bridge, ports) and common networking concepts (e.g., master/slave network architecture and bridging) which are used in the USB context, rather than detailed aspects (e.g., signal timing, signal levels, power levels) of the USB protocol. See generally Ex. 1009; see also Ex. 1084, 103:21–104:2, 104:24–105:4; Pet. Reply 4 (citing Ex. 1084,7 100:17–101:12 (acknowledging that Dr. Houh testifies that one of ordinary skill in the art “would know basic USB concepts like bridging, master/slave architecture, etc.”), 102:3–8, 103:21– 104:2, 104:24–105:4). Likewise, claim 1 repeatedly recites “USB,” but does so to identify that all of the components of the data system (i.e., USB ports, USB hub, USB bridge, USB host, USB multiplexing switches) employ the USB protocol. Ex. 1009, 9:15–10:18. As the ’072 patent teaches, “USB 7 Houh Deposition Tr. (2024/12/18, Day 1). technology . . . [wa]s commonly available, familiar to the end user, cost effective and ubiquitous.” Id. at 1:35–37. Thus, although the ’072 patent is taught in the USB context, “computer network protocols” concepts are the focus. For these same reasons, we find unavailing Petitioner’s argument that one of ordinary skill in the art “would have been well-versed in USB standards (including the USB 2.0 and 3.0 Specifications and the OTG Supplement) and the design/deployment of USB hosts, USB devices, and USB hubs, including suitable environments for USB systems.” Pet. 26.” slip op. at 11
- Expert testimonyPetitioner expert discountedOther
“Lastly, we give little weight to Mr. Welch’s testimony regarding the level of one of ordinary skill as he does not indicate what precisely constitutes the basis of his testimony on this issue. See Ex. 1013 ¶ 47.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, Petitioner argues that “embedded USB host” means “USB host physically embedded in a vehicle.” See Pet. 27–28. “Patent Owner does not contend that any claim construction is required.” PO Resp. 5. We agree with Patent Owner that we do not need to construe any term to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). And we afford the claim terms their plain and ordinary meaning.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“that the asserted objective evidence is tied to a specific product that ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)). In other words, “[a] presumption of nexus requires both that the product embodies the invention and is coextensive with it.” Id. at 1211 (citing Brown, 229 F.3d at 1130). Patent Owner fails to show either of these requirements. First, Patent Owner argues that in his Supplemental Declaration, Dr. Houh “provides on a per limitation basis how [Patent Owner]’s dual role hub meets all limitations of claim 1.” PO Resp. 73 (citing Ex. 2019 ¶ 136). Notably, Patent Owner cites to a single paragraph in this declaration, without providing any specific arguments in its Response that its product practices claim 1. Id. Rather, Patent Owner incorporates its arguments by reference, which is not permitted. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Thus, we do not consider these arguments, and we are not persuaded that Patent Owner’s product practices claim 1. Consolidated Trial Practice Guide November 2019,8 35–36 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (informative)) (“[P]arties that incorporate expert testimony by reference in their petitions . . . without providing explanation of such testimony risk having the testimony not considered by the Board.”).” slip op. at 16
Patent outcomesUS 11,176,072 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,176,072 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2024-00461 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- BurdenUnpatentable
“Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated by a preponderance of the evidence that Vornefeld in combination with Atsuta discloses or suggests all of the limitations of dependent claim 28. We also determine that Petitioner has shown that a person of ordinary skill in the art would have been motivated to make the combination proposed by Petitioner and would have had a reasonable expectation of success in doing so.” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12. Patent Owner does not address the level of ordinary skill in the art. But see Ex. 2028 ¶ 19 (Patent Owner’s witness, Dr. Chrissan, stating: “Patent Owner has not offered a different understanding of a POSITA [as set forth in the Petition], and the PTAB accepted Petitioner’s submission. . . . [F]or the purposes of the subject IPR proceedings, I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties, at oral argument, confirmed that a construction of “sector” is not necessary to decide this case. See Tr. 14:9–15:3 (Petitioner: “JUDGE MCMILLIN: Do we need to engage in claim construction in order to decide this case? MR. ROSENTHAL: I don't believe so, Your Honor.”); id. at 62:13–18 (Patent Owner: “That [prior IPR] proceeding was decided and did not turn on a definition of sector. In this case, this doesn’t need to turn on the definition of sector either.”). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Even if Patent Owner is correct that Atsuta is an FDD system, that argument does not show a fatal flaw in Petitioner’s obviousness case. Petitioner is not, as Patent Owner implies, proposing to change Atsuta’s purportedly FDD system to a TDD system or to bodily incorporate Atsuta’s entire system into Vornefeld’s system or to make a system that attempts to use both FDD and TDD together. Rather, Petitioner is applying Atsuta’s frame structure—the organization, in the same portion of the same frame, of timeslots for users located in different sections—in Vornefeld’s downlink portion of a frame in a TDD system. See, e.g., Pet. 38 (“the combination would use one known frame structure in place of another—specifically, Atsuta’s design that includes transmissions to multiple sectors in one frame.”). Patent Owner does not persuasively argue that Atsuta’s teachings in that regard are uniquely applicable to an uplink portion in a FDD system such that they are not also applicable to Vornefeld’s system. Rather, Patent Owner, in response to Petitioner’s contention that Atsuta’s frames are compatible with a TDD frame, argues that, “[b]ecause Atsuta provides little explanation as to how its invention could be modified to apply to downlink transmissions at all, let alone in addition to uplink, a POSA would not have applied Atsuta’s invention to downlink transmissions in a TDD frame as Petitioner alleges without support.” PO Resp. 44 (citing Ex. 2028 ¶ 109). That is an argument that there is no reason to combine the references’ teachings because Atsuta lacks an explicit teaching to combine them. It is not an argument that Atsuta’s frame structure cannot work in Vornefeld’s system and therefore the teachings cannot be combined. Additionally, Patent Owner’s requirement of an explicit teaching to combine in the references themselves has been rejected. KSR Int’l Co., 550 U.S. at 415; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”).” slip op. at 36
Patent outcomesUS 7,230,931 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.All claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00978 · APJ Ken B Barrett · IPR · Final written decision
Claims 28 and 29 are unpatentable as obvious over Vornefeld and Atsuta; the Board did not reach the four remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12. Patent Owner does not address the level of ordinary skill in the art. But see Ex. 2028 ¶ 19 (Patent Owner’s witness, Dr. Chrissan, stating: “Patent Owner has not offered a different understanding of a POSITA [as set forth in the Petition], and the PTAB accepted Petitioner’s submission. . . . [F]or the purposes of the subject IPR proceedings, I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties, at oral argument, confirmed that a construction of “sector” is not necessary to decide this case. See Tr. 14:9–15:3 (Petitioner: “JUDGE MCMILLIN: Do we need to engage in claim construction in order to decide this case? MR. ROSENTHAL: I don't believe so, Your Honor.”); id. at 62:13–18 (Patent Owner: “That [prior IPR] proceeding was decided and did not turn on a definition of sector. In this case, this doesn’t need to turn on the definition of sector either.”). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated by a preponderance of the evidence that Vornefeld in combination with Atsuta discloses or suggests all of the limitations of dependent claim 28. We also determine that Petitioner has shown that a person of ordinary skill in the art would have been motivated to make the combination proposed by Petitioner and would have had a reasonable expectation of success in doing so.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“in Atsuta are comprised of different timeslots reserved for data transmission (Ex. 1005, 6:35-58), just as a TDD frame is.” Ex. 1002 ¶ 105 (cited at Pet. 32 for the “compatible” proposition); see also id. ¶ 94 (“Vornefeld’s and Atsuta’s frame structures are consistent with each other. Both are directed to TDMA frame structured transmissions between a base station and subscribers.”). Dr. Almeroth also provided credible testimony in support of Petitioner’s contention (Pet. 28–29) that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings. See Ex. 1002 ¶¶ 95–97; see, e.g., id. ¶ 96 (“A POSA would readily understand that combining Atsuta with Vornefeld would have been straightforward. Atsuta’s method for allocating time slots to subscribers in different sectors within a single TDMA frame matches Vornefeld’s MAC protocol, which allows transmission to a subscriber with the ‘granularity of a single time slot.’” (citing Ex. 1004, 54)). Dr. Almeroth further testifies that certain cited disclosures in Atsuta “is all the information a POSA would need to determine that it would be obvious that a single frame in Vornefeld could include downlink transmissions to different sectors,” and “[t]hat would be true regardless of Atsuta’s duplexing method (e.g., FDD or TDD).” Ex. 1025 ¶ 22 (citations omitted). Dr. Almeroth additionally opines that “a POSA would understand that Atsuta’s description of a TDMA frame would indicate to a POSA a methodology that would incorporate one or compatible with a TDD frame.” Pet. 32; see also id. at 27–29 (contentions regarding a reasonable likelihood of success in making the proposed combination). In the Response, Patent Owner argues that Petitioner’s compatibility contention is incorrect. PO Resp. 44. We find that Petitioner’s subsequent argument and accompanying evidence is an appropriate reply to Patent Owner’s argument of incompatibility.” slip op. at 38
Patent outcomesUS 7,230,931 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Google LLC v. Wildseed Mobile, LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00246 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–25 are unpatentable as obvious: claims 1, 5–6, 8–11, 15–16, 20–21, and 25 over Sasaki, Ellis, and Jacobi; claims 2–4, 12–14, 17–19, 22–23 over those references and Teicher; claims 7 and 24 over those …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art on or before June 22, 2007 would have been knowledgeable and familiar with the field of portable devices and venue or event recommendations . . . . That person would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field . . . . Lack of work experience can be remedied by additional education, and vice versa.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the foregoing discussion, Patent Owner fails to provide a sufficient reason to discount the weight of Dr. Houh’s testimony. We credit Dr. Houh’s testimony to the extent that it “articulate[s] specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools, 829 F.3d at 1380.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 13. Patent Owner “agrees with Petitioner that the terms of the challenged claims should be given their plain and ordinary meaning,” and provides its characterization of that meaning for some terms. Resp. 7–10. Patent Owner asserts that the plain meaning of “plurality of media” is “more than one media.” Id. at 8. Patent Owner further asserts that the “inferring . . . preferences” in the claims does not encompass forming inferences based upon user-entered preferences. Id. at 8–10. However, as that the claimed limitations are taught even under Patent Owner’s characterization of the plain and ordinary meaning of the terms. See infra § II.E.4. For the foregoing reasons, no need exists to construe any claim terms expressly to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On the complete trial record, Patent Owner’s arguments do not show a teaching away from the claimed invention or a lack of motivation to combine the references’ teachings. Even if Ellis teaches away from home-bound television systems, neither the invention nor Sasaki relates to a home- to which the alleged drawbacks of stationary televisions do not apply. Moreover, Sasaki itself is directed to both music and video preferences. See, e.g., Ex. 1004 ¶ 74. To the extent the systems include differences in types of media content, both systems focus on recommending media based on user preferences. For example, as summarized above, Petitioner persuasively shows that Sasaki and Ellis address similar problems associated with providing recommendations to users of portable digital media for all types of events. See, e.g., Ex. 1004 ¶¶ 74, 114 (disclosing a recommendation system that collects information about different media content types, such as music, still pictures, video, and text to provide recommendations to guide purchases at facilities such as CD/DVD shops and bookstores, sightseeing areas, attraction places, art museums, museums, movie theaters, coffee shops, hotel lobbies, and other public facilities); Ex. 1005 ¶¶ 7, 15–17, 57, 162 (describing a system for controlling audio or other digital content data or software (including from radio stations or the Internet) and providing recommendations for music, shopping for music, concert venues, radio station events, etc.). Although Patent Owner argues that Ellies and Sasaki each have technological features that would not be feasible to combine because of cost and an increase in the number of parts such as “antennas and related components,” Petitioner assert that “the proposed combination relies on Ellis’s techniques for automatically determining the user’s preferences by monitoring the content consumed by the user—not how the content is delivered to the mobile device.” Pet. Reply 21. Petitioner argues, and we agree, that obviousness does not turn on whether the devices described by person having ordinary skill in the art would combine their teachings to render obvious the claimed invention. See Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Although Patent Owner points to an increase in cost and the number of parts as reasons not to combine the teachings of Sasaki and Ellis, the obviousness determination recognizes that “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obvious motivation to combine;” rather, such facts should be weighed as a whole in such a determination. Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). As summarized above, Petitioner’s reasons for combining the references (e.g., providing automatic recommendations based on determined preferences and digital consumption in real time and addressing similar problems), and the multi-media focus of Sasaki provide persuasive reasons for a person of ordinary skill in the art to combine their teachings despite an increase in cost and the number of parts in a resulting process or system. Petitioner asserts that a person having ordinary skill in the art would have found it obvious to combine the teachings of Jacobi with those of Ellis and Sasaki because Jacobi teaches techniques for generating and displaying recommendations to a user that would be useful to those contemplating use of the recommendation system as proposed through the combined teachings of Sasaki and Ellis. Pet. 27 (citing Ex. 1003 ¶ 64). For example, Petitioner points to recommendation of local events and facilities on a display device in its proposed Sasaki-Ellis combination, and that Jacobi describes transmitting a recommendation message through a web page or email. Id. at 27–28 (citing Ex 1006 ¶ 74; 1003 ¶ 66). Petitioner asserts that a person generating details to expand the capabilities of the Sasaki-Ellis system, and thereby motivate their combination. Id. (citing Ex. 1003 ¶ 67). Petitioner further asserts that a person having ordinary skill in the art would have a reasonable expectation of success in their combination because Sasaki “already contemplates displaying text, images and icons to the user and that the user can access the server via the Internet,” and that Jacobi’s recommendation messages are generated via Web pages or email. Id. (citing Ex. 1004 ¶¶ 39, 128; Ex. 1006 ¶ 74; Ex. 1003 ¶ 68). Patent Owner does not specifically contest Petitioner’s assertions. We determine that Petitioner has provided a reasoned explanation, supported by the record evidence, sufficient to show that a person having ordinary skill in the art would have combined the teachings of Jacobi with those of Sasaki and Ellis.” slip op. at 24
Patent outcomesUS 9,141,960 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,141,960 - Google LLC v. Wildseed Mobile, LLCAll claims unpatentablePTAB · May 29, 2024 · IPR2023-00244 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the cited combinations of Sasaki, Ellis, and Jacobi.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“explains, “[m]onitoring the content that the user consumes and determining the user’s preferences automatically [as Ellis teaches] captures the user’s preferences in near real-time, rather than waiting for the user to manually supply her preferences (which she may never do).” Pet. 26 (emphasis added) (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). “A further benefit would be that, as the user’s preferences change over time, Ellis’s technique would update the recommendations to that user accordingly.” Id. (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). As indicated above, these reasons for combining the teachings are persuasive. Cited portions of Sasaki and Ellis provide a factual underpinning for this rationale and support Dr. Houh’s credible testimony. See Ex. 1003 ¶¶ 44–55 (providing detailed summaries of Sasaki and Ellis), 58–62 (providing reasons for combining Sasaki and Ellis) 74–95 (relying on the teachings of Sasaki and Ellis and describing the relevant result of the combination).” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“combining the references is persuasive as it is supported by factual underpinnings and the credible testimony of Dr. Houh. Accordingly, Petitioner’s showing for limitation 1.1.2 is persuasive.” slip op. at 44
- Expert testimonyPetitioner expert creditedDecided for petitioner
“explains, “[m]onitoring the content that the user consumes and determining the user’s preferences automatically [as Ellis teaches] captures the user’s preferences in near real-time, rather than waiting for the user to manually supply her preferences (which she may never do).” Pet. 26 (emphasis added) (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). “A further benefit would be that, as the user’s preferences change over time, Ellis’s technique would update the recommendations to that user accordingly.” Id. (citing Ex. 1005 ¶¶ 230, 233; Ex. 1003 ¶¶ 58–60). As indicated above, these reasons for combining the teachings are persuasive. Cited portions of Sasaki and Ellis provide a factual underpinning for this rationale and support Dr. Houh’s credible testimony. See Ex. 1003 ¶¶ 44–55 (providing detailed summaries of Sasaki and Ellis), 58–62 (providing reasons for combining Sasaki and Ellis) 74–95 (relying on the teachings of Sasaki and Ellis and describing the relevant result of the combination).” slip op. at 35
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“content types . . . , wherein the plurality of media content types comprises textual media, image media, audio media, and video media.” (Emphasis added). Based on what a “plurality” means, i.e., “more than one,” claim 1 implicitly recites “infer one or more entertainment preferences . . . based . . . in part on . . . [more than one] media content types . . . , wherein the [more than one] media content types comprises textual media, image media, audio media, and video media” (emphasis added). Patent Owner’s construction effectively construes “plurality”/“more than one” such that “plurality” means “at least four.” Assuming arguendo the ’021 patent specification supports this implicit construction for purposes of this trial, because claim 1 recites “one or more . . . preferences” in the alternative, the scope of claim 1 includes an interpretation in which four preferences are based on the four media types recited in limitation 1.1.2. That is, limitation 1.1.2 under Patent Owner’s proposed construction encompasses the following: “infer [four] entertainment preferences . . . based . . . in part on . . . [four] media content types . . . , wherein the four media content types comprise[] textual media, image media, audio media, and video media.” Therefore, the plain language of claim 1 is broad enough under this “more . . . preferences” alternative such that each of the four preferences is based on one or more of the four media types, because claim 1 broadly requires that four preferences collectively (as a group) are based on at least the four media types recited.” slip op. at 12
Patent outcomesUS 10,251,021 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,251,021 - Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · May 15, 2024 · IPR2023-00119 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–7, 9–15, 17, and 18 are unpatentable: claims 1–3, 5, 7, 9–11, 13, 15, 17, and 18 are anticipated by Rosenberger; claims 4, 6, 12, and 14 are obvious over Rosenberger and Basye.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the term “low power mode” is not necessary to reach a decision in this inter partes review of the challenged claims. Both parties agree that the ordinary and customary meaning of “low power mode” is “an operating mode or state in which power is conserved,” and thus, this is the construction we will use in reaching our patentability determination. As we discuss below, the dispute between the parties concerns when a networked device in Rosenberger exits the low power mode, not whether Rosenberger discloses a low power mode as claimed. As stated by Patent Owner, the dispositive issue in this proceeding is whether Rosenberger “teach[es] a process by which devices in a low power mode remain in that low power mode while exchanging messages with other devices for the purpose of determining whether to exit the low power mode.” PO Resp. 2.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the prior art, the sophistication of the disclosed technology in the ’330 patent, and Dr. Johnson’s testimony, we adopt Petitioner’s definition of the level of ordinary skill. Accordingly, based on the evidence before us, we determine a person of ordinary skill in the context of the ’330 patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, the key issue between the parties is when does Rosenberger exit its low power mode? Petitioner asserts Rosenberger exits its low power mode after the devices exchange weighted signal inputs and after the devices determine which device will respond to a user query, and thus anticipates claims 1, 9, and 17. Patent Owner asserts Rosenberger exits it low power mode upon receiving a trigger word, and thus does not anticipate these claims. Because Rosenberger discloses several different embodiments, to some extent both parties are correct. See Reply 5 (asserting that Patent Owner’s arguments “inappropriately limit Rosenberger’s teachings as a whole to one specific example”); id. at 10–11. We agree with Petitioner, however, that at least one of the embodiments in Rosenberger discloses the claimed invention and thus anticipates claims 1, 9, and 17. Moreover, Patent Owner’s argument “relies on the erroneous assumption that the disclosure of multiple examples renders one example less anticipatory.” Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008). Regarding the weighted signal, Rosenberger discloses the control device of the invention uses one of several different coordination methods to achieve the design goal of avoiding duplicate responses to the same speech command while selecting a single control device best able to successfully interact with the system user. All of the methods involve the calculation and production by the control device of a numeric weighted signal (WS) that quantifies the “quality” of a just-recognized speech command. Ex. 1003, 10:34–41. Rosenberger also discloses that “there are a number of methods for the devices to be coordinated so that only the single device with the highest weighted signal proceeds to interact with the user and/or process the speech command.” Id. at 11:27–31. Rosenberger discloses that its device D starts out in a “low power ‘listening’ mode.” Id. at 8:17–20. Rosenberger then explains that “[u]pon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase” (id. at 8:20–24), the winning device “beeps, changes its status light 34 or plays a prerecorded or synthesized audio message” to prompt the user to state its query. Id. at 8:30–32. This indicates that the determination based on the weighted signal is made while the system is still in low power mode and before the winning device “beeps, changes its status light 34 or plays a prerecorded or synthesized audio message” to prompt the user to state its query” (id.).” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner provides three arguments as to why a person of ordinary skill in the art would have been motivated to combine Rosenberger with Basye. Pet. 61–62. Petitioner first argues that “Rosenberger and Basye are in the same field of endeavor and relate to voice-controllable computing devices.” Id. at 61 (citing Ex. 1003, 1:8–13 (“The present invention relates… to improvements in speech-recognizing control devices that respond to oral commands from a system user to produce a desired effect or result.”); Ex.1013 ¶ 1 (“Computing devices may include speech recognition capabilities…. A computing device may also be capable of processing the recognized speech for specific speech recognition applications.”)); see Ex. 1002 ¶ 182). Second, Petitioner argues that “Rosenberger and Basye both disclose techniques for intelligently ‘waking’ a voice-controllable computing device using a ‘trigger phase’ (or ‘keyword’ or ‘wakeword’ in Basye’s terminology).” Pet. 61–62; see Ex. 1002 ¶ 183. Third, Petitioner argues that “Rosenberger discloses that any ‘control” slip op. at 53
Patent outcomesUS 10,593,330 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,593,330 - Sonos, Inc. v. Google LLCAll claims unpatentablePTAB · May 15, 2024 · IPR2023-00118 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–5, 7–13, and 15–20 are unpatentable: claims 1–3, 7–11, and 15–18 are anticipated by Rosenberger; claims 4, 5, 12, 13, 19, and 20 are obvious over Rosenberger and Basye.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the prior art, the sophistication of the disclosed technology in the ’398 patent, and Dr. Johnson’s testimony, we adopt Petitioner’s definition of the level of ordinary skill. Accordingly, based on the evidence before us, we determine a person of ordinary skill in the context of the ’398 patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the term “low power mode” is not necessary to reach a decision in this inter partes review of the challenged claims. Both parties agree that the ordinary and customary meaning of “low power mode” is “an operating mode or state in which power is conserved,” and thus, this is the construction we will use in reaching our patentability determination. As we discuss below, the dispute between the parties concerns when a networked device in Rosenberger exits the low power mode, not whether Rosenberger discloses a low power mode as claimed. As stated by Patent Owner, the dispositive issue in this proceeding is whether Rosenberger “teach[es] a process by which devices in a low power mode remain in that low power mode while exchanging messages with other devices for the purpose of determining whether to exit the low power mode.” PO Resp. 2.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“some extent both parties are correct. See Reply 5 (asserting that Patent Owner’s arguments “inappropriately limit Rosenberger’s teachings as a whole to one specific example”); id. at 10–11. We agree with Petitioner, however, that at least one of the embodiments in Rosenberger discloses the claimed invention and thus anticipates claims 1, 9, and 16. Moreover, Patent Owner’s argument “relies on the erroneous assumption that the disclosure of multiple examples renders one example less anticipatory.” Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008). Regarding the weighted signal, Rosenberger discloses the control device of the invention uses one of several different coordination methods to achieve the design goal of avoiding duplicate responses to the same speech command while selecting a single control device best able to successfully interact with the system user. All of the methods involve the calculation and production by the control device of a numeric weighted signal (WS) that quantifies the “quality of a just-recognized speech command.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner asserts: it would not have been obvious to modify Rosenberger in accordance with the teachings of Basye to not perform speech recognition on the audio data that corresponds to an utterance of the particular, predefined hotword (Pet. 69-73), as recited, because the entire premise of Rosenberger’s invention is to perform speech recognition. PO Resp. 47 (citing Ex. 2012 ¶ 111). According to Patent Owner, a person of ordinary skill “would not have been motivated to modify Rosenberger such that its computing device no longer performs speech recognition on the audio data corresponding to the trigger phrase (alleged ‘hotword’) because the proposed modification alters the speech recognition principles forming the entire premise of Rosenberger.” PO Resp. 51 (citing 2012 ¶¶ 109–114). As we have noted above, the summary of the invention disclosed in the ’398 patent states “each time the words ‘OK computer’ [the chosen “hotword”] are spoken, it is picked up by a microphone, conveyed to the system, which performs speech recognition techniques to determine whether the hotword was spoken and, if so, awaits an ensuing command or query. Ex. 1001, 1:62–66. Thus, before the “the output of processing the audio data” is transmitted, the system first uses “speech recognition techniques” to determine whether the words spoken are, in fact, the adopted “hotword.” The ’398 patent does not define how “speech recognition techniques” differ from “speech recognition.” To the extent there is a substantive difference, Petitioner relies on Basye. As Petitioner explains, using Basye instead of Rosenberger’s speech recognition, would “help reduce ‘false positive’ detections of a ‘trigger phrase’ (or ‘wakeword’).” Pet. 68 (citing Ex. 1002 ¶ 210). Petitioner also asserts that “Bayse explains that the use of ‘thresholding’ can help reduce false positives, which is a situation where a computing device incorrectly determines that speech is present or that speech includes a wakeword.” Id. (citing Ex. 1013 ¶¶ 51, 74–75). This provides a good reason why a person of ordinary skill would want to modify, and improve, Rosenberger’s performance.” slip op. at 50
Patent outcomesUS 10,134,398 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,134,398 - Google LLC v. Wildseed Mobile, LLCAll claims unpatentablePTAB · Apr 9, 2024 · IPR2023-00248 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–7 and 9–14 are unpatentable as obvious over Frerichs, Kawasaki, and Kauffman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Neither the claim language, Specification, nor the file history of the ’414 patent support the narrow reading of “information taken by the cellular device from a message” that Patent Owner argues. We find Patent Owner’s argument that the ordinary and customary meaning of this claim language requires that the information be limited to data actually in a message as 11 The Examiner’s views as to the interpretation and scope of the claims are important to consider, but an examiner cannot disavow or disclaim scope on behalf of an applicant. distinguished from also meaning information derived or generated from a message lacks merit.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. PO Resp. 3 (“Patent Owner applies Petitioner’s definition of a POSITA and level of ordinary skill for purposes of the Patent Owner Response.”). Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner as it is not disputed by the Patent Owner and is consistent with the ’414 patent and the asserted prior art.” slip op. at 26
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Reply 18–19. We agree with Petitioner that Patent Owner’s attack on Petitioner’s articulated (and largely uncontested) motivations to combine and showing of reasonable expectation of success lacks merit. Petitioner proposes to combine the relevant teachings of the combination and shows that a skilled artisan would have been motivated to combine these relevant teachings with a reasonable expectation of success, such as, by combining Frerichs’s teachings of a cellular device that presents targeted advertisements to a user with Kawasaki’s teachings of profiling users based on scanning their received content information. Omega Patents, LLC. v. BMW of North America, LLC, No. 2022-2012, 2024 WL 22780, at *3 (Fed. Cir. January 22, 2024) (“Obviousness is determined based on ‘what the combined teachings of the references would have suggested to those having ordinary skill in the art’ and ‘does not require an actual, physical substitution of elements.’”) (quoting In re Mouttet, 686 F.3d 1322, 13332–33 (Fed. Cir. 2012)). During oral argument, Patent Owner pointed particularly to the declaration of Dr. Malek (Ex. 2009) at paragraphs 129 and 131, and 134. Tr. 113–114. Those paragraphs discuss training sets for neural networks, which are distinguishable from Kawasaki’s recognizers, which are the end product of the neural networks and not the data used to train it. See Ex. 2009 ¶ 161. The recognizers that Petitioner proposes to combine with Frerichs’ cell phone are “algorithms and rules.” See id.; Ex. 1005, 4:17–24. Kawasaki’s recognizers are targeted to specific topics; e.g., “golfing Recognizer 23.” Ex. 1005, 4:37–41. Although Dr. Malek argues that such recognizers would need “possibly thousands of words” (Ex. 2009 ¶ 130), Dr. Malek does not attest that a “golfing” recognizer would need a thousand word vocabulary. Dr. Malek’s testimony is instead based on characteristics of a “neural network system” purposed for “analyzing content of a web page.” Id. at ¶ 54. More particularly, Dr. Malek discusses “running Kawasaki’s neural network model,” but not Kawasaki’s recognizers upon which Petitioner relies for its combination. Id. at 56.” slip op. at 49
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner contends that both Frerichs and Kawasaki are analogous art to the ’414 patent. Pet. 28 (citing Ex. 1003 ¶¶ 70–71). In support, Petitioner argues: Both Frerichs and Kawasaki relate to targeted advertising techniques. The field of endeavor of the ’414 Patent is “inserting advertisements into broadcast content played on a mobile device.” Ex.1001, 1:15-17. Frerichs is analogous art at least because it relates to “inserting a targeted advertisement based upon a user profile through streaming audio.” Ex.1004, 1:10-13. Kawasaki is analogous art because it relates to targeting offers and “advertisements.” Ex.1005, 2:55-57, 1:25- 29. Id.” slip op. at 47
Patent outcomesUS 7,376,414 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,376,414
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.