• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand

  Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22

  Patent outcomesUS 11,004,271 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,004,271
• Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00253 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10 were not shown unpatentable under either § 103 ground because the evidence did not establish a reason to combine the references or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent. D.I. 8. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’035 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition. C.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In our Institution Decision, we construed the claim term “string separator character” to mean “a single-character string separator,” and invited the parties to raise any issues they had with this construction in future briefing. D.I. 10. Patent Owner subsequently indicated that it agreed with this construction. See PO Resp. 8. Petitioner did not raise any objections to this construction (see generally Pet. Reply). Accordingly, and in the absence of any dispute, we construe “string separator character” to mean “a single-character string separator.” Neither Petitioner nor Patent Owner ask us to adopt explicit constructions of any other claim terms. See Pet. 14, PO Resp. 8–9; Pet. Reply 1–23; PO Sur-reply 2–7. We also find that the issues in dispute can be resolved without construing any other claim terms. Accordingly, we do not adopt explicit constructions of any other claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms … that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). D.” slip op. at 12

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

    “search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” See PO Resp. 26–27. Indeed, Petitioner has given little or no explanation of how one of ordinary skill in the art allegedly would have taken the “idea of incremental search” and applied it to Lotus Notes. See, e.g., Ex. 2021, 116:20–117:17 (Petitioner’s declarant, Dr. Terveen, testifying that “Raskin is not explicitly talking about searching across a set of documents, but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin simply does not teach a mode of incremental searching that applies to the query-style, document-finding searching of the type Petitioner cites from Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Mr. Haeberli contrasting the Lotus Notes searches cited by Petitioner with Raskin’s searches). Raskin even states that it is “difficult or impossible to implement incremental searches” using interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Mr. Haeberli’s testimony that this passage of Raskin “directly undermines Dr. Terveen’s suggestion that a POSITA would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 24

  Patent outcomesUS 7,370,035 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,370,035
• Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00254 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1–20 were not shown unpatentable under either §103 ground because Petitioner failed to establish motivation to combine and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence then of record, including the asserted prior art and the ’490 patent. Dec. 9. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’490 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 9

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

    “In our Decision on Institution, the only term that we found it necessary to construe was the term “string separator character” in claim 1. We preliminarily construed this term to mean “a single-character string separator.” Dec. 11, 30–31. We invited the parties to address the appropriateness of this construction over the course of the trial. Id. at 11, 31. In its briefing, Patent Owner agrees with the Board’s preliminary construction, arguing that it is “consistent with the intrinsic evidence.” PO Resp. 8 (citing Ex. 1001, claims 8 and 20). Patent Owner further argues that a person of ordinary skill would have understood a multi-character Boolean operator such as “AND” to be “a search syntax instruction rather than a string separator.” Id. at 9 (citing Ex. 1059, 162; Ex. 2001 ¶ 112). Petitioner’s Reply Brief does not address the issue of claim construction. See generally Reply Br.; see also Pet. 11 (“Unless otherwise noted, Petitioner applies the plain and ordinary meaning of all claim terms below.”). Following our review of the full record, we determine that it is not necessary to construe this or any other claim term for the purposes of this Decision.2 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.). In our analysis below, we interpret the language of the claims according to its plain and ordinary meaning.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Having reviewed the evidence of record, we find Mr. Haeberli’s testimony to be more persuasive and better supported by the evidence. According to Dr. Terveen, “[r]obust programming languages such as C and C++, together with well-developed operating system and UI frameworks, . . . allowed an ordinary programmer to build a UI that supported incremental searching, as evidenced by the numerous prior art systems that implemented such functionality, including Entourage, Eudora, Emacs, Canon Cat, SwyftWare, and others. Ex. 1100 ¶ 43 (citing Ex. 1004, 8–9, 161; Ex. 1021, 125, 127, 129; Ex. 1039, 102–103; Ex. 1043, 385–389). The relevant question, though, is not whether it would have been possible to build a user interface that supported incremental search, but whether it would have been “simple and straightforward” to execute an incremental search of multiple partial search strings on large, indexed multi-file databases such as those described in the Lotus Notes references, as Dr. Terveen alleges. None of the prior art discussed in the “State of the Art” section of Dr. Terveen’s initial declaration, taken individually or together, discloses incrementally searching a plurality of files using two partial search strings. See Ex. 1003 ¶¶ 32–33, 37, 40; Ex. 2001 ¶ 100. Thus, creating a user interface might be “simple,” but the evidence suggests that the back-end execution of an incremental search is not. See, e.g., Ex. 1021, 126 (Raskin, concluding that “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches”).” slip op. at 23

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

    “different approach from that taken in Lotus Notes. The difference between Raskin’s sequential scanning method and the index-based system described in Wilcox is that sequential scanning by definition can only scan one document at a time as each document is loaded into a “buffer.” See, e.g., Ex. 2020 ¶ 35. Lotus Notes, however, only needs to load the index into memory for a user to be able to locate the single index entry identifying all instances of an indexed term across all indexed files. In fact, Raskin acknowledges that indexing may be necessary to maintain an acceptable response time. Ex. 1021, 132 n.10; see also id. at 129 (indexing speeds search times). Mr. Haeberli’s third and final reason for concluding that one of ordinary skill would not have been motivated to combine Raskin’s incremental search with Lotus Notes is that at the time using incremental searches would have presented “extreme technical difficulties.” Ex. 2001 ¶ 101. Here again we find Mr. Haeberli’s explanation more persuasive than Dr. Terveen’s opinion that combining the teachings from Raskin with Lotus Notes’ teachings “would have required only simple and straightforward software modifications.” Ex. 1003 ¶ 80. According to Mr. Haeberli, “there are serious technical challenges with implementing the complex search strategies of the challenged claims in the systems on which Dr. Terveen relies.” Id. ¶ 96. As Patent Owner argues: searching across a set of files to find specific files requires the system to identify which files are in the set, access those files (which are often not loaded in active memory), search their contents, determine which files contain matches to search criteria, and then present results to the user; all tasks that do not exist in the same way (or at all) for a search confined to text in a single open file already loaded into memory. Sur-Reply 9; see Ex. 2020 ¶¶ 15, 35–36. There would have been other challenges as well. For example, “[t]he type of sequential scanning typically employed to search a single open document is very time and resource intensive if employed to search a large set of documents.” Ex. 2020 ¶ 15. Also, “[i]mplementing incremental search in the Lotus Notes indexed system would necessarily require a larger index, which would slow down, rather than increase the search speed.” PO Resp. 23; see Ex. 2020 ¶ 33. Finally, Raskin itself concludes that “even if incremental searching is advantageous, ‘almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.’” Ex. 2001 ¶ 96 (emphasis added by Mr. Haeberli) (quoting Ex. 1021, 126). In short, Mr. Haeberli presents three significant reasons why there would have been no motivation or expectation of success in combining the teachings of Wilcox with those of Raskin. Dr. Terveen’s opinion to the contrary, on the other hand, is not supported by evidence. Dr. Terveen testifies that “[a] POSITA would have been motivated to perform Lotus Notes’ multi-string search incrementally for the reasons stated by Raskin: speed, effectiveness, and ease of use.” Ex. 1003 ¶ 78 (citing Ex. 1021 ¶¶ 125–127). The evidence, however, not only fails to support Dr. Terveen’s testimony, but also demonstrates that one attempting to make the proposed combination would not have reasonably expected the proposed combination to result in greater speed or effectiveness.” slip op. at 27

  Patent outcomesUS 10,552,490 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,552,490
• Microsoft Corp. v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00255 · APJ William V Saindon · IPR · Final written decision

  Claims 1–27 were not shown unpatentable under either §103 ground because Petitioner did not establish a persuasive reason to combine the cited teachings with adequate factual support.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not comment on Petitioner’s formulation of the level of ordinary skill, or offer its own formulation in its Response. Patent Owner’s declarant, however, states: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that [Petitioner] has provided its own definition . . . . 31. I believe [Petitioner’s] definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Patent Owner’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent. Dec. on Inst. 8. Following a review of the full record, we agree that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Patent Owner’s for the purposes of this proceeding. We continue to view Patent Owner’s proposed definition as consistent with the ’139 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Petitioner does not assert any explicit claim constructions. Pet. 12. In our Decision on Institution, the Board construed “string separator character” as “a single-character string separator.” Dec. on Inst. 10, 28–29. Patent Owner explicitly agreed with this construction in its Response (Resp. 8–9), and Petitioner offered no further comment in its Reply. Although no claim construction issue is squarely before us now, we maintain our prior construction of “string separator character,” and do not construe any further limitations. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “We agree with Patent Owner that a problem with Petitioner’s combination is that it proposes to take the idea of incremental searching from Raskin and divorce it from Raskin’s teaching of incremental searching. See PO Resp. 20 (arguing, “a [person of ordinary skill in the art] must consider all the teachings of a reference, and not pick out general ‘concepts’ disclosed in the art without considering the context in which they are used”); see also id. at 17–28 (setting out the whole argument); Ex. 2020 ¶¶ 39–62 (Patent Owner’s declarant explaining why Petitioner’s approach is “technically problematic”). Raskin’s incremental search is tied to finding and moving to character strings within a document. Ex. 1021, 125. For example, if a user were to type a string that was found in the text, “the instance [of that string] is selected and the cursor placed immediately after the end of the selection.” Id. The cursor can move about the text as characters of the search string are added or deleted. Id. at 125–126. Thus, Raskin discloses in-text search, even when searching across documents. Id. at 132 (“After the local document has been completely searched the search then proceeds through the following documents until the end of the folder is reached, when the search continues from the beginning of the first document in the folder until the current, already searched document is reached. After cycling through the folder, the next larger domain is treated similarly, and so forth.”). Raskin even distinguishes its text-finding search from Lotus Notes’ document-finding search, stating that “[i]t is usually easy to tell in what domain you are searching, because you see the results in context; what you see is not just a list of file names, as with many present search systems.” Id. (emphasis added); see also PO Sur-reply 16 (citing the same page and arguing that “Raskin recommends doing the opposite of what is claimed”). This context gives credence to Patent Owner’s argument that “the search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” PO Resp. 26–27. Indeed, Petitioner has given little-to-no explanation of how one takes the “idea of incremental search” and applies it to Lotus Notes. Ex. 2021, 116:20–117:17 (Petitioner’s declarant testifying that “Raskin is not explicitly talking about searching across a set of documents [at once], but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin does not teach a mode of incremental searching that applies to the query-style, document-finding searching in Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Patent Owner’s declarant contrasting Lotus Notes and Raskin). Raskin even states that it is “difficult or impossible to implement incremental searches” using standard interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Patent Owner’s declarant stating that this passage “directly undermines [Petitioner’s declarant’s] suggestion that a [person of ordinary skill in the art] would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 34

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

    “Entourage and what True is doing and how it is doing it, Petitioner asserts that it would have been obvious to use True’s two search strings “to provide more targeted searching, as was common sense and well known in the art.” Pet. 60 (citing Pet. 8–9; Ex. 1057, 27); see also id. at 56, 66 (similar). But we are not persuaded by a preponderance of the evidence that True provides more targeted searching or better search results when finding documents. True itself appears silent on the issue. Petitioner cites Exhibit 1057, but all that stands for is the general premise that doing a Boolean AND search in a Web search engine reduces the number of search results. Ex. 1057, 27. Petitioner does not allege that True uses a Boolean AND search of the kind discussed in Exhibit 1057. Thus, the statement in Exhibit 1057 regarding reducing the number of search results is tied to a manner of performing Boolean searches, something Petitioner does not use to modify Entourage. In other words, Exhibit 1057 is of little relevance to the Entourage-True combination, and does not serve as a factual underpinning in support of Petitioner’s reasoning. Petitioner also cites to several other references that discuss Boolean-style searches, but these generic background disclosures do not explain why a person of ordinary skill in the art would have considered it obvious to use one or more features of the probabilistic-based interest level search from True in a document-finding application like Entourage. See Pet. 8–9 (string citing over a dozen references with no pinpoint citations). Accordingly, there appears to be little reason, absent hindsight, to incorporate some aspect of a text-as-proxy-for-sounds system like True into Entourage’s filter or Find feature to provide more targeted searching. Accord Ex. 2020 ¶ 120 (“Patent Owner’s declarant stating that “a [person of ordinary skill in the art] working on the problem of searching large document collections would not look to [True,] a system designed for navigating imprecise transcriptions of single audio files, as the technical approaches and constraints are entirely different”). Patent Owner argues, and we agree, that another problem with Petitioner’s combination is that True does not appear to actually provide more targeted or better searching. PO Resp. 59–60 (“True’s search capabilities are inherently imprecise”) (citing Ex. 1009, 1:18–27; Ex. 2001 ¶ 137); see also Ex. 1009, 4:31–37 (explaining that True uses a speech recognition system that calculates confidence levels based on a “% likelihood that [a word] corresponds to the portion of the digitized audio [at a given time]”); Ex. 2020 ¶ 114 (Patent Owner’s declarant stating that “the purpose of True is not to definitively locate where a search string actually appears”). Petitioner does not explain what about True would make some aspect of Entourage’s filter or Find features more targeted. Even if it was known to use Boolean AND searches, for example, Petitioner is not citing True to modify Entourage to have a Boolean search. True uses an “interest level” search instead, which is more inclusive than a Boolean AND search (it adds together hits for “queen” OR “mother,” and may return hits containing neither). Ex. 1009, 5:29–50, Fig. 2 (showing results list 22 having several results which do not indicate any of the searched-for words); see Ex. 2020 ¶ 116 (Patent Owner’s declarant analyzing True’s interest level search would also include “text [that] does not show the query word”). Petitioner does not appear to be proposing to incorporate an interest level search or a Boolean-style search into the filter or Find features, and we are not persuaded that True in fact provides more targeted searching. Even if the quality of the transcripts in True happened to be perfect (see Pet. Reply 10, arguing that “True describes searching a text file that has 100% accuracy”), the fact remains that True attempts to find text in particular time windows using an interest level search based on the probability that a word or words were spoken in a given time window, which is completely different from what Entourage is doing with its search (see Ex. 2020 ¶¶ 114–116, 121). In its Reply, Petitioner states that True teaches “an incremental search for multiple search strings entered in a search field.” Pet. Reply. 10. This is a broad generalization of what True does, made with the benefit of hindsight, but as we have just explained, True’s interest level search is different from the kinds of searches done in Entourage or even the Boolean-style web searches performed in the background references. See, e.g., Ex. 1057, 27. This means it is not a matter of taking one known teaching and simply applying it to another system. True is doing something different, and it’s not clear how True’s search would actually provide “precise, targeted search results” (Pet. Reply 3) given that True appears to suggest a less-targeted search than claimed (see, e.g., Ex. 1001, 29:62–63, claiming “identifying one or more documents included in both the first one or more documents and the second one or more documents”). See also Ex. 2001 ¶¶ 135 (Patent Owner’s declarant stating that “Entourage and True are directed to completely different purposes”), 136–138 (further analysis); Ex. 2020 ¶ 114 (stating that “the purpose of True is not to definitively locate where a search string actually appears”), ¶ 116 (stating that True returns text that does not even have the search word). True does not teach, suggest, or support Petitioner’s general premise that there is a benefit for an incremental search for multiple search strings entered in a search field or that such searches would provide precise, targeted search results. The problem with Petitioner’s analysis becomes more apparent when the Petition turns to the “string separator character” of claim 1. Notably, it is the claimed string separator character that converts a field with a single search string into a field with two search strings. See, e.g., Ex. 1098, 37:12– 41–4 (deposition of Patent Owner’s declarant) (discussing that a string separator character is what instructs the computer to break up one string of characters into separate strings of characters). Thus, one cannot discuss the string separator character apart from the limitations requiring first and second search strings in a single search field. Nevertheless, Petitioner treats the “string separator character” in isolation. See Pet. 61–62. Petitioner’s reason for modifying one or both of Entourage’s filter and/or Find feature(s) to have a string separator character is because “it was common to [use string separator characters].” Id. at 61. However, even if something was known, it does not mean it is obvious to incorporate it into one or both of these features in Entourage. KSR, 550 U.S. at 418 (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). Adding a string separator character to divide a single string into two separately searched strings changes how the software would function. See Ex. 1098, 39:22–40:8 (Patent Owner’s declarant testifying that software has to look for a string separator character in order to know multiple search strings were entered in the field). The space character in “Orson Welles,” used in the Advanced Find example in Barber, for example, is not a string separator character because one looking to exclude hits with “Orson Welles” is searching for the string “Orson Welles”—the space is another character in the name string whose inclusion serves a specific semantic purpose (delineating between a first and last name). See Ex. 2001 ¶ 151 (“there is no evidence that when a user types ‘Orson Welles’ into this Find command text box that a search is performed on ‘Orson’ and ‘Welles’ separately as opposed to searching on the full text string ‘Orson Welles.’”); Ex. 1006, 387 (discussing how exclude the specific person “Orson Welles” from the search, not to find someone having the first name “Orson” or the last name “Welles”); see also Ex. 1003 ¶ 144 (Petitioner’s declarant implicitly acknowledging that the space in “Orson Welles” is not a string separator character). Thus, the space character in “Orson Welles” does not signal to the computer to break the string up into two parts at the space and perform” slip op. at 42

  Patent outcomesUS 9,633,139 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,633,139
• Magic Leap, Inc. v. Percept Technologies Inc.All claims unpatentable
  PTAB · Mar 11, 2026 · IPR2023-00495 · APJ Kristen L Droesch · IPR · Remand

  Claims 1–3 and 12–14 are unpatentable as obvious over Osterhout and, separately, over Mann ’526 and Vaissie.

  RulingsRemand decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “March 15, 2013 filing date, a person of ordinary skill in the art (“POSITA”) would have had a B.S. degree and a Masters degree in Computer Science, Computer Engineering, Electrical Engineering, Physics, or an equivalent field, as well as one to two years of academic or industry experience in wearable electronic devices or comparable industry experience. Pet. 8–9 (citing Ex. 1003 ¶ 21). Although the level of skill in the art was addressed in the Preliminary Response and the Decision on Institution (see Prelim. Resp. 27–30; Dec. on Inst. 6–10), Patent Owner does not address Petitioner’s definition of the level of ordinary skill in the art. See PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’113 Patent Specification and the asserted prior art.” slip op. at 7

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

    “For all of the foregoing reasons, we decline to adopt Patent Owner’s proposed ordinary and customary meaning for “a dynamic eye tracking mechanism in communication with the lens” because it is not supported by the claim language or the ’113 Patent Specification, and is supported only by unsworn attorney argument.” slip op. at 13

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

    “below, we agree with Petitioner. We find that Osterhout teaches the dynamic eye tracking mechanism is in optical communication with the lens, consistent with its ordinary and customary meaning, because in Osterhout the user’s eye receives optical communication in the form of light transmitted from the translucent lens, and the camera of the dynamic tracking mechanism, in turn, receives optical communication in the form of light from the user’s eye. See Ex. 1005 ¶¶ 164, 304.” slip op. at 20

  Patent outcomesUS 8,696,113 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,113
• Digital Global Systems, Inc. v. Deepsig, Inc.Some claims unpatentable
  PTAB · Mar 6, 2026 · IPR2024-01358 · APJ William V Saindon · IPR · Final written decision

  Claims 1–3, 7–11, 15–19, 23, and 24 are unpatentable as obvious; claims 4–6, 12–14, and 20–22 were not shown unpatentable because the prior art did not teach the claimed received-signal feedback and transmitter-model update.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that: Persons of ordinary skill in the art (“POSITA”) would have a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with of radio communication systems and machine learning. Additional work or research experience can substitute for less or different education, and vice-versa. Pet. 3–4 (citing Ex. 1003 ¶¶ 33–34). Patent Owner does not appear to challenge this level of skill. We use Petitioner’s definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’704 patent.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “parameters “associated with the base station.” PO Resp. 31–32. In particular, Patent Owner argues that a transmitter “implemented in a base station” is not “associated with the base station.” Id. at 31. Petitioner argues that Patent Owner offers no reason to believe that a transmitter “implemented in a base station” is not “associated with the base station.” Pet. Reply 4–5; see also id. at 3–6 (entire argument). A plain reading of a “model associated with a base station” would encompass a model that operates in a base station. We do not see anything in the ’704 specification that would indicate “associated with” has any special meaning, or has a meaning contrary to our understanding of the plain meaning. We do not see the word “associated” outside the claims, whereas we see the word “implement” throughout the specification, generally in reference to an actual use of a model (consistent with our plain reading). See, e.g., Ex. 1001, 5:35–39, 6:3–17, 10:55–11:3 (discussing “implementations” where the model or some other feature of the system is used in a particular way). Accordingly, we construe a model “implemented in a base station” to be “associated with the base station.”” slip op. at 12

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

    “scenarios” (see PO Resp. 16–21), Patent Owner argues that “Jüschke does not disclose any association of the weight or bias parameters, . . . to any deployment scenario, and . . . base station” (id. at 19). For the reasons explained in our claim construction section above, we construe “deployment scenarios” to include “inline mode” models located within a base station, according to the list of deployment scenarios set out in the ’704 patent. See Ex. 1001, 2:38–65. The in-line deployment scenario depicted in Figure 6A of the ’704 patent bears a striking resemblance to the arrangement depicted in Figure 1 of Jüschke. In both figures, the analog radio signal is fed directly into the model and then the model directly outputs the signal to the amplifier. Compare Ex. 1001, Fig. 6A, with Ex. 1005, Fig. 1. As construed, the “deployment scenarios” represent the physical configurations of the device in which the model is found, such as “in-line.” Petitioner shows by a preponderance of the evidence that Jüschke’s similar in-line configuration is a “deployment scenario” as claimed because it teaches an inline model for a cellular system transmitter (i.e., base station). Pet. 26–29 (citing, e.g., Ex. 1005, Fig. 1, ¶¶ 6, 59; Ex. 1003 ¶¶ 146–147); see also Ex. 1001, 2:37–41 (stating that “[t]he particular deployment scenario[] may be . . . sending a radio transmission from a cellular base station that includes the . . . model . . . in an inline mode”).” slip op. at 26

  • BurdenNot shown unpatentable

    “Based on our claim construction analysis of claim 4, above, we agree with Patent Owner that claim 4 requires an actually transmitted signal and an update of the transmitter’s model. This claim construction eliminates Petitioner’s position regarding Holt teaching a modeled signal. See, e.g., Pet. Reply 17–23. We then turn to Petitioner’s argument that Holt teaches updating a model using an actually transmitted signal. See Pet. 59–60. There, Petitioner relies on a disclosure in Holt of an “actual communication channel 302 used to train the channel model 208.” Ex. 1006, 18:1–2. This is depicted in Figure 6 of Holt, in connection with a “fourth loss function” which is used to “train the decoder model.” Id. at 18:42–48; see generally id. at 17:58–18:51 (describing Figure 6). Whether training the channel model or the decoder model, Holt here does not disclose using the actual communication channel to train the encoder, i.e., transmitter. In sum, we find that Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “obtaining a received radio signal,” and even if it did, Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “updating the value of the model parameters” in the manner required by claim 4. Claims 12 and 20 are nearly identical to claim 4, and Petitioner’s ground fails for similar reasons. See Pet. 76. Claims 5, 6, 13, 14, 21 and 22 depend from claims 4, 12, and 20, and Petitioner’s ground fails for similar reasons as those claims. See id. at 77–80.” slip op. at 31

  Patent outcomesUS 11,018,704 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 11,018,704
• Guangzho Eko Trading Development Co., Ltd. v. Nine Stars Group (U.S.A.) Inc.Instituted
  PTAB · Jan 14, 2026 · IPR2025-01191 · APJ Kara L Szpondowski · IPR · Institution

  The Board instituted IPR on claims 1–24 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. PATENT OWNER’S 35 U.S.C. § 325(D) ARGUMENTS Patent Owner presents arguments directed to discretionary considerations under 35 U.S.C. § 325(d) and requests the Petition be denied based on these arguments. Prelim. Resp. 2–16. However, Patent Owner’s § 325(d) arguments are untimely under the “Interim Director Discretionary Process,”6 and, as such, will not be considered by the Board. See Section I.C. (“The . . . patent owner should not present discretionary considerations in the . . . Patent Owner Preliminary Response (POPR)”); Section I.E. (“[A] Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations.”). 5 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step1 6 https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.” slip op. at 38

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Petitioner bears the burden of establishing that Wang is a printed publication. Medtronic, 891 F.3d at 1380. The determination of whether a document is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “A claim is unpatentable as anticipated under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must also “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,822,165
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “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.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. 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 the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 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).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  Patent outcomesUS 10,574,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 8, 2025 · IPR2025-00897 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim966 combination renders claim 1 obvious.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition demonstrates that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’527 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention of the ’527 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” and that “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Pet. 12 (citing Ex. 1003 ¶¶ 40–43). Patent Owner at this stage of the proceeding does not provide an alternative definition for a level of skill in the art that one would have had at the time of the invention of the ’527 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 3–4. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 12. We view the definition for the level of ordinary skill is consistent with the ’527 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6

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

    “Petitioner argues that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. At this stage, Patent Owner agrees that no terms need construction. Prelim. Resp. 3. We determine that no express constructions are needed for us to render our Decision on Institution. 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.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 7

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

    “discloses the preamble and the remaining limitations of claim 1. Pet. 38–64. Petitioner identifies where the combination of Kim, Dahlman, and Kim966 teaches these limitations, supported with testimony from Dr. Mandayam, which Patent Owner does not specifically rebut at this stage. We determine, on this record, that the combination of Kim, Dahlman, and Kim966 teaches the preamble (whether or not limiting) and the remaining undisputed limitations of claim 1. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.”) (quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). We also find that Petitioner has provided sufficiently articulated reasoning, which Patent Owner does not specifically address at this stage, to support combining Kim, Dahlman, and Kim966’s teachings in the manner Petitioner does. Pet. 21–38. 3. Summary In summary, based on the current record, we determine that Petitioner shows a reasonable likelihood that the combination of Kim, Dahlman, and Kim966 renders claim 1 obvious.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,944,527
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 5, 2025 · IPR2025-00903 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim-966 combination renders the claims obvious.

  RulingsInstitution decision

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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’110 patent. Accordingly, we institute an inter partes review.” slip op. at 2

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

    “966 renders obvious this limitation. See Pet. 50–53. With respect to the “first signaling,” Petitioner argues that the combination teaches “the UE [user equipment] receiving a ‘system information block (‘SIB’) (a first signaling) which can include various types of information such as ‘information about the allocation of subframes to uplink/downlink and configuration of the special subframe in the case of TDD [time division duplexing].” Id. at 43 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 21, 65; Ex. 1003 ¶ 100). Petitioner argues that “[b]ecause the SIB assigns time resources or an ‘allocation of subframes for uplink/downlink,’ an SIB would be understood to function as and render obvious as assigning the UE a collection of time intervals (e.g., subframes) or ‘time resource pools.’” Id. at 51 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 60–61, 64–78, 84; Ex. 1003 ¶ 113). Petitioner contends that “a POSITA would have understood and found obvious that the first signaling (SIB) is used to determine an ‘allocation of subframes to uplink/downlink’ (a first time resource pool) through an assignment of a Time Division Duplexing (TDD) configuration.” Id. (citing Ex. 1003 ¶ 113). Petitioner submits that “[t]he TDD configuration would identify a series of subframes available for uplink and downlink (a first time” slip op. at 13

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

    “Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 2. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Mandayam, Petitioner contends that an ordinarily skilled artisan for the ’110 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 12. Petitioner additionally contends “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Id. Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’110 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,546,110

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.