• Qualcomm Incorporated v. Cobblestone Wireless, LLCSome claims unpatentable
  PTAB · Mar 5, 2026 · IPR2024-01336 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–4, 6–9, 24, and 25 are unpatentable; claims 10, 13, 14, 17, and 21–23 were not shown unpatentable, principally due to missing limitations or insufficient motivation to combine.

  RulingsFinal written decision

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

    “information” should be given its plain and ordinary meaning as “data,” and that Patent Owner’s narrower construction of “first information” and “second information” lacks sufficient support in the intrinsic record. We agree with Petitioner that the ’802 patent Specification defines “information” as data when it uses the phrase “information (i.e., data).” See Ex. 1001, 5:60–62 (“Information (i.e., data) to be transmitted may be received in a baseband digital system 250, such as a wireless digital baseband processor.” (emphasis added)), 11:30–32 (“In this example, the signals 911 and 912 carry the same information (data).” (emphasis added)). As the Federal Circuit has explained, a “specification’s use of ‘i.e.’ signals an intent to define the word to which it refers.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009). slip op. at 13

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

    “argument based on Fernandez alone, we find that Petitioner has not provided a sufficient evidentiary basis to support a motivation to remove the amplification from each of Fernandez’s signal generators 10A-10E and add a single power amplifier instead. See Pet. 76–77 Ex. 1003 ¶ 235. Petitioner’s only rationale for this modification to Fernandez is that “[a] single amplifier has several advantages compared to multiple amplifiers, including lower complexity, a single (vs. multiple) potential point of failure, and lower cost,” and that one of ordinary skill “would have found a single amplifier to be a simple matter of design preference.” Pet. 76–77. Dr. Almeroth simply repeats these cursory allegations without providing any further explanation or evidentiary support. Ex. 1003 ¶ 235. Moreover, Dr. Cooklev provides credible testimony that replacing Fernandez’s amplification in signal generators 10A–10E with a single amplifier would not necessarily have the advantages that Petitioner suggests. See Ex. 2013 ¶¶ 99, 104–105. For example, Dr. Cooklev testifies that a single amplifier would need to have a wider bandwidth than the multiple amplifiers used in Fernandez, which could cause potential stability issues. Id. ¶ 105. According to Dr. Cooklev, this wider bandwidth would require more circuit elements, and thus would not provide the reduction in space usage and power consumption that Petitioner asserts. Id. According to Dr. Cooklev, Montojo also points to several “substantial, and potentially impractical, drawbacks” of using a single amplifier for multiple signal generators, including power constraints imposed by spectral emission requirements and on-board battery capacity. Id. ¶ 104 (citing Ex. 1006 ¶¶ 7– 8). In light of this testimony, which we find credible, Petitioner has failed to provide sufficient explanation or evidence to support its assertion that one of ordinary skill would have found it obvious to replace the multiple amplifiers in Fernandez’s signal generators with a single amplifier.” slip op. at 65

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

    “argument based on Fernandez alone, we find that Petitioner has not provided a sufficient evidentiary basis to support a motivation to remove the amplification from each of Fernandez’s signal generators 10A-10E and add a single power amplifier instead. See Pet. 76–77 Ex. 1003 ¶ 235. Petitioner’s only rationale for this modification to Fernandez is that “[a] single amplifier has several advantages compared to multiple amplifiers, including lower complexity, a single (vs. multiple) potential point of failure, and lower cost,” and that one of ordinary skill “would have found a single amplifier to be a simple matter of design preference.” Pet. 76–77. Dr. Almeroth simply repeats these cursory allegations without providing any further explanation or evidentiary support. Ex. 1003 ¶ 235. Moreover, Dr. Cooklev provides credible testimony that replacing Fernandez’s amplification in signal generators 10A–10E with a single amplifier would not necessarily have the advantages that Petitioner suggests. See Ex. 2013 ¶¶ 99, 104–105. For example, Dr. Cooklev testifies that a single amplifier would need to have a wider bandwidth than the multiple amplifiers used in Fernandez, which could cause potential stability issues. Id. ¶ 105. According to Dr. Cooklev, this wider bandwidth would require more circuit elements, and thus would not provide the reduction in space usage and power consumption that Petitioner asserts. Id. According to Dr. Cooklev, Montojo also points to several “substantial, and potentially impractical, drawbacks” of using a single amplifier for multiple signal generators, including power constraints imposed by spectral emission requirements and on-board battery capacity. Id. ¶ 104 (citing Ex. 1006 ¶¶ 7– 8). In light of this testimony, which we find credible, Petitioner has failed to provide sufficient explanation or evidence to support its assertion that one of ordinary skill would have found it obvious to replace the multiple amplifiers in Fernandez’s signal generators with a single amplifier.” slip op. at 65

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We find credible and agree with Dr. Cooklev’s testimony that the predistortion signals from tables 17-1 and 17-2 “are cancelled out by Suzuki’s amplifier” 28. Ex. 2013 ¶ 50. Dr. Cooklev supports his opinion by referring to paragraph 1 of Suzuki, which states that Suzuki’s invention is directed to “a multi-band lookup table type predistorter” (such as the one implemented using lookup tables 17-1 and 17-2 in Figure 6) that “compensates for a distortion of a power amplifier.” Ex. 2013 ¶ 54; Ex. 1004 ¶ 1. Dr. Cooklev’s opinion is also supported by paragraph 3 of Suzuki, which explains that a conventional digital predistorter uses a lookup table “for linearizing non-linear characteristics of an amplifier.” Ex. 1004 ¶ 3; Ex. 2013 ¶ 54. Dr. Cooklev further supports his opinion by relying on Suzuki’s disclosure in paragraph 46 that power amplifier 28 is “subject to distortion compensation” by the predistorter, and that distortion components in the signal output by the amplifier are canceled by “distortion compensation data [that] are read out from the lookup tables 17-1 and 17-2 and provided to the adders 13-1 and 13-2, respectively.” Ex. 1004 ¶ 46; Ex. 2013 ¶ 54. And, Dr. Cooklev’s opinion is supported by Suzuki’s disclosure in paragraph 47 that the distortion compensation added by adders 13-1 and 13-2 add the distortion compensation data from lookup tables 17-1 and 17-2 “to perform distortion compensation (addition of predistortion)” to “signals to be transmitted.” Ex. 1004 ¶ 47; Ex. 2013 ¶ 54. Petitioner agrees that the distortion compensation data from lookup tables 17-1 and 17-2 “are added to the respective frequency band from” input signal ST “in order to predistort the output signal, which is then transmitted,” and does not dispute that the distortion compensation data from lookup tables 17-1 and 17-2 is ultimately cancelled out by the distortion created by amplifier 28. Pet. Reply 8. In light of the above evidence, we agree with Patent Owner that Suzuki’s distortion components from lookup tables 17-1 and 17-2 in Figure 6 (which Petitioner relies on for the first and second digital signals in limitations 10a and 10b) are cancelled out by the distortion created by power amplifier 28 before the signal is ultimately transmitted. We agree with Petitioner that these first and second digital signals include data in the form of distortion compensation data. However, because these signals are cancelled by the distortion from amplifier 28 before transmission, the data from these signals is never transmitted. Thus, the first and second digital signals identified by Petitioner (the distortion compensation data from lookup tables 17-1 and 17-2) do not comprise data “to be transmitted,” as limitations 10a and 10b require.” slip op. at 35

  Patent outcomesUS 7,924,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,924,802
• Apple Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Oct 9, 2025 · IPR2024-00806 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–8, 15–17, and 20 are unpatentable under § 103; claims 14 and 19 were not shown unpatentable because the proposed paramagnetic flux paths in Wakuda lacked adequate support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 33. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’830 patent specification.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “The parties agree that independent claims 1, 19, and 20 include means plus function limitations under 35 U.S.C. § 112 ¶ 6.8 Pet. 3–7; PO Resp. 6–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claims 1, 19, and 20 are means plus function limitations. Pet. 3–7; PO Resp. 6–14. Construing a means plus function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Therefore, the specification clearly links the function of “control[ing] supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” at least to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.11 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs to the switch; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law 11 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:17–20. that limits the structure to that necessary to perform the claimed function. 12 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 18

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

    “to include the ability disclosed in Ramsay to allow a user to customize and store parameters associated with haptic effects, such as creating “haptic track files” that specify variations in the amplitude and frequency of the effect over time to achieve a desired effect. Pet. 46–47 (citing Ex. 1006 ¶¶ 15, 25– 28, 37; Ex. 1003 ¶¶ 192–193). Petitioner argues that this combination would have been motivated by the desire to expand the functionalities of haptic devices to allow end users to create and customize haptic effects, to provide a fuller haptic experience, and to be able to store haptic effects to save processing power compared to real-time generated effects. Id. at 47–49 (citing Ex. 1006 ¶¶ 14–15, 30, 47, 53–57; Ex. 1003 ¶¶ 194–196). Petitioner argues that this making combination would have had a reasonable expectation of success given that both references deal with linear actuators, both disclose storing frequency and amplitude values, and the combination involves routine knowledge of software techniques. Id. at 49–50 (citing Ex. 1004, 2:3–9; Ex. 1006 ¶¶ 17, 26–28; Ex. 1003 ¶¶ 197–198). Petitioner further argues that it would have been obvious to use the H-bridge switch of Rossi as part of the Gregorio actuator drive circuit 16 in the asserted Gregorio-Ramsay combination to periodically switch the polarity of drive signals to electric coil 28 of Gregorio, and thus oscillate magnet 27, under the control of a signal from processor 12 of Gregorio. Pet. 56 (citing Ex. 1003 ¶ 211). Petitioner argues that this combination would have been motivated because Gregorio does not disclose implementation details and therefore one of ordinary skill would have looked toward teachings like Rossi to fill in those details, and that an H-bridge switch was a well-known example circuit for implementing a change in “current flow direction/polarity” for “push” and “pull” actions in a system, and was a simple, cost-effective, and reliable circuit design. Id. at 56–58 (citing Ex. 1020, Abstr., Figs. 4, 6, 1:65–3:54; Ex. 1003 ¶¶ 212–217). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques through routine circuit design considerations and software instructions for generating the control signal. Id. at 58 (citing Ex. 1003 ¶ 218). Petitioner further argues that it would have been obvious to modify the Gregorio-Ramsay-Rossi combination, using the control algorithm disclosed in Aldrich, to replace the monitoring technique of Gregorio with that of Aldrich to maintain a resonance frequency by incrementing or decrementing the drive frequency. Pet. 58–59 (citing Ex. 1004, 4:22–28, 4:42–48; Ex. 1021, 2; Ex. 1003 ¶ 219). Petitioner’s expert provides implementation details of Aldrich, including that the Aldrich hill-climb technique would use a Boolean value to indicate whether the frequency was being increased, with local variables set to default values, and use integer values when processing sensor signals. Id. at 59–60 (citing Ex. 1021, 2; Ex. 1003 ¶¶ 220–222). Petitioner argues that these modifications would have been motivated to improve the Gregorio system using the Aldrich feedback algorithm for targeting a resonant frequency, given that the Gregorio approach had shortcomings that required a monitoring period with reduced haptic feedback, receiving weak EMF signals. Id. at 61–62 (citing Ex. 2004, 3:65–5:55, 5:63–65; Ex. 1021, 1–3; Ex. 1003 ¶¶ 223–227). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques for improvement to yield predictable results, readily implemented via software executed by the microprocessor. Id. at 62–63 (citing Ex. 2004, 2:44–50; Ex. 1021, 2; Ex. 1003 ¶ 229). Patent Owner does not address Petitioner’s arguments regarding the” slip op. at 27

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,941,830
• Teladoc Health, Inc. v. Data Health Partners, Inc.Some claims unpatentable
  PTAB · Sep 12, 2025 · IPR2024-00617 · APJ Andreas Baltatzis · IPR · Final written decision

  Claims 1–5, 9–14, 16–18, and 20 are unpatentable as obvious; claims 6 and 7 were not shown unpatentable because the asserted grounds did not establish their missing limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 6 (citing Ex. 1012 ¶ 36). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bryan Bergeron. Ex. 1012 ¶ 36. Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. See generally PO Resp.; Ex. 2005 ¶ 32. On the full record, we determine Petitioner’s proposed level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’142 patent and the prior art of record. C. Claim Construction” slip op. at 7

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

    “We agree with Petitioner that the Specification supports construing “selection” as including inputs to a user interface, thereby “assigning” a client to a provider within the system. For example, the Specification describes a user interface including selection components. Ex. 1001, 10:45– 48 (“the user interface . . . may display . . . selection or display components”), 12:19–22 (authorized users may make selections by doubling tapping a touchscreen). The Specification further discloses that the “administrators may have complete access to the service providers and the clients to assign the clients to individual service providers through the user interface.” Id. at 11:13–18 (reference numerals removed, emphasis added). Taken together, we agree with Petitioner that assigning clients in response to selections of a user interface is consistent with the plain and ordinary meaning of the claims and the Specification. We decline to read Patent Owner’s additional limitations of “deliberate and active choice” into the claim, because these additional limitations lack support both in the claim language and the Specification. We do agree with Patent Owner’s argument that assigning and selection must be distinct elements, because they are separately listed and assigning happens in response to selection(s).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the Specification defines “projected closure date” as the date at which a goal will end. However, we agree with Petitioner that this definition is not limited to final goals, and would include the end date of any goal, including intermediate goals. Accordingly, we interpret “projected closure date” as the date at which any goal will end. We apply that definition below.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Patent Owner responds that “Petitioner does not identify any selection made by Douglas’s administrator which may result in assignment of a provider.” PO Resp. 15 (citing Pet. 19–20; Ex. 1002, 6:33–7:13, Fig. 2). First, Patent Owner construes “selection” as “a deliberate and active choice by an administrator,” and argues that “Douglas discloses no such selection.” Id. at 15–16 (citing Ex. 1001, 11:13–18; Ex. 2005 ¶ 66). Instead, “Douglas’s administrator merely inputs pre-determined information from the prescription form” that the physician provided and thereby selected. Id. at 16 (citing Ex. 1002, 6:33–7:13, Fig. 2; Ex. 2005 ¶ 67). We find this argument not commensurate with the claim scope. As discussed above in claim construction, we decline to read Patent Owner’s additional limitations of “deliberate and active choice” into the selection limitation as lacking support both in the claim language and the Specification. Supra, Section III.C.1. Second, Patent Owner argues that Douglas does not teach assigning “in response to” an administrator’s selection. PO Resp. 16–17. Instead, Patent Owner argues that Douglas’s “information entered by the case advisor was provided by the physician.” Id. (citing Ex. 1002, 6:33–7:16). Again, we find this argument not commensurate with the claim scope, as the claim does not require a single assignment of client to provider. In other words, even if Douglas’s prescription information qualifies as a first assignment of client to provider, Douglas teaches the administrator using the same information to assign the client to a provider within the system, thereby meeting the required claim limitation.” slip op. at 16

  Patent outcomesUS 11,151,142 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,151,142
• Teladoc Health, Inc. v. Data Health Partners, Inc.Some claims unpatentable
  PTAB · Sep 12, 2025 · IPR2024-00616 · APJ Andreas Baltatzis · IPR · Final written decision

  Claims 1–9, 11–17, 19, and 20 are unpatentable as obvious; claim 10 was not shown unpatentable because the petition lacked evidence supporting the proposed missing-data alert modification.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific” slip op. at 7

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

    “We agree with Patent Owner that the separately listed “goals, a plan of action, and thresholds,” should be considered distinct elements that cannot exist as the “same element” and therefore must be separately taught by the art. However, we agree with Petitioner that the claims and Specification describe the elements as interrelated whereby one may interact the other, even if they are separate elements. See Google, 92 F.4th at 1059 (“The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input.”).” slip op. at 10

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

    “modify Douglas with Wager to “ensure that the assigned physician had the capacity to effectively treat the patient,” given the number and variety of patients in Douglas’s system. Pet. 54–55 (citing Ex. 1002, 6:6–14, 6:36–7:4, Figs. 51, 57; Ex. 1012 ¶ 129). Petitioner asserts that Wager addresses this problem by presenting the staff manager “with a suite of provider assignment options and alternatives, to automatically organize and drive assignment ratios and other assignment parameters and options with compliance, capacity, best practice and other criteria taken into account.” Id. at 54 (citing Ex. 1003 ¶¶ 6–7; Ex. 1012 ¶ 128). Petitioner further argues that the combination “would have also helped ensure that the assigned physician had the capacity to effectively treat the patient” because Wager’s interface effectively manages capacity issues against fluctuating clinical demands, thereby increasing quality of care for the patient. Id. at 55 (citing Ex. 1003 ¶¶ 6, 8, 20; Ex. 1012 ¶ 129). Patent Owner makes six different arguments that one of ordinary skill would not have been motivated to combine Douglas with Wager. PO Resp. 36–46. As discussed below, Patent Owner’s arguments do not persuasively rebut Petitioner’s articulated reasons to combine the references, because Patent Owner’s arguments are inconsistent with KSR’s “expansive and flexible approach” to obviousness. See 550 U.S. at 415.” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Finally, Patent Owner argues that “Douglas teaches against accomplishing its goals in an in-person setting like the one to which Wager is directed.” PO Resp. 43–45 (citing Ex. 1003 ¶¶ 4, 5, 11, 13; Ex. 2005 ¶ 108; Ex. 2006, 66:6–19). Patent Owner argues that Douglas’s system remotely monitors patients to avoid the costs and inconvenience of in-person programs. Id. (citing Ex. 1002, 1:29–35, 2:5–7; Ex. 2005 ¶ 109; Ex. 2006, 67:16–68:2). Patent Owner adds that Douglas’s teaching of office visits does not contradict the “remote only” argument, but instead, reinforces the patient’s desire to remain with their original physician, “instead of utilizing the proposed Douglas-Wager system to reassign the patient to a new physician.” Id. at 45. We are not persuaded by Patent Owner’s argument that Douglas teaches away from the combination with Wager. Douglas’s preference for remote medicine does not criticize or discourage office visits or the combination with Wager’s in-person setting. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). Accordingly, there is no teaching away from the combination with Wager’s computerized system for assigning patients to physicians.” slip op. at 47

  Patent outcomesUS 11,144,554 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,144,554
• Juniper Networks, Inc. v. Monarch Networking Solutions LLCSome claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00175 · APJ Norman H Beamer · IPR · Final written decision

  Claims 7, 9–11, 13, 14, 16, and 17 are unpatentable as obvious over Biswas and Kumar; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 14 (citing Ex. 1003 ¶¶ 62–64). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 8–9. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 14; PO Resp. 15. We have not been presented with the need to construe any claim terms for this Decision. D.” slip op. at 11

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

    “We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. We are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Ex. 1003 ¶¶ 77, 97–101. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Biswas and Kumar.” slip op. at 13

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

    “This disclosure is inconsistent with any suggestion that the Fangman system, when routing a telephone call to its destination, identifies the private IP address of the destination telephone by determining the port range to which the port number of the destination telephone belongs. When Fangman describes the NAPPT process, it does not indicate that port ranges are used, but rather repeatedly states that port numbers are used: The [service gateway] receives a data packet from the IP device, including a public destination IP address . . . a destination port number . . . and source information, NAPPTs the data packet, using the [public destination IP address] and the [destination port number] to identify the [IP telephone] . . . . Ex. 1024, code (57). Performing NAPPT on the data packet received from the destination may include using the public destination IP address and the destination port number to uniquely identify the IP telephone, and changing the public destination IP address to a private source IP address of the IP telephone while leaving the destination port number unchanged. Ex. 1024, 4:28–33. The SG 170 may maintain a table of semi-permanent mappings of the external IP address and ports to the internal hosts and ports. Ex. 1024, 8:49–51.” slip op. at 33

  Patent outcomesUS 8,693,369 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,369
• Samsung Electronics Co., Ltd. v. Memoryweb, LLCSome claims unpatentable
  PTAB · Jul 31, 2023 · IPR2022-00221 · APJ Lynne H Browne · IPR · Final written decision

  Claims 1–13 are unpatentable under the stated obviousness grounds; claims 14 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’658 Patent would have had the following education and experience: (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least one year of experience designing graphical user interfaces for applications such as photo organization systems . . . Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 27). Patent Owner does not challenge this definition of the level of skill at this time. Prelim. Resp. 45. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with 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 11

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

    “The ’658 Patent states, “Application Views–The Application Views utilizes the Application’s ability to associate Digital Tags to Digital Files and display them in customized views such as Uploads, Collections, Slideshow, Location, Timeline, Family Tree, People Profile, and Recipes.” Ex. 1001, 9:18–22. Thus, we understand “application view” to mean a customized display of digital tags or files and we adopt this definition of “application view.” Id. Turning to Patent Owner’s contention that the claim language requires the application view of be separate and distinct relative to other claimed views, we do not agree with Patent Owner’s sweeping statement. Rather, each claim must be considered to determine if the structure of the claim requires a view that is separate and distinct from the application view or if the claim further defines the application view.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Further, we do not agree with Patent Owner that Petitioner’s proposed claim construction “allows an infinite number of intervening events.” PO Sur-reply 3. Rather, Petitioner’s position, as supported by Dr. Greenspun’s testimony, is that “ a POSITA would have recognized that the term ‘responsive to’ merely requires that the second event happen ‘subsequent to’ the first event based on a combination of user interaction and software implementation.” Pet. Reply 4 (citing Ex. 2022, 42:21–44:22; Ex. 2024, 108:20–109:12; Ex. 1047 ¶ 7). We credit Dr. Greenspun’s testimony regarding claim construction for “responsive to a click or tap” and adopt this definition as our own. Ex. 1047 ¶¶ 7–11.” slip op. at 18

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

    “Although, we agree with Patent Owner, that Petitioner does not dispute that in its second combination Okamura’s cluster maps and their associated geographic information would be lost, we do not see how this observation renders the proposed combination untenable. Petitioner has shown how the proposed combination meets limitations [1b]–[1g] of claim 1. Pet. 26–28, 37–56. To the extent that Patent Owner’s arguments regarding the Petitioner’s first proposed combination apply to its second proposed combination, those arguments are unconvincing for the reasons discussed above. In particular, we determine that the benefits of “better managing digital content” and an enhanced user experience “by providing ‘a good view of what location is associated with what’” outweigh any loss of geographical information. See Pet. 22–30. For these reasons, we determine that Petitioner has shown by a preponderance of the evidence that the combined teachings of Okamura and Belitz as combined in Petitioner’s second combination would have rendered displaying of first and second location selectable thumbnails as required by limitations [1b]–[1g] obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 40

  Patent outcomesUS 10,423,658 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,423,658
• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  Patent outcomesUS 10,907,459 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,907,459
• Google LLC v. Mindbasehq, LLCSome claims unpatentable
  PTAB · Jan 6, 2023 · IPR2021-01252 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–13, 20–32, 41, and 42 are unpatentable as obvious; claims 14–19, 33–40, and 43–46 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Petitioner argues, and we agree, the claims of the ’680 patent do not support Patent Owner’s arguments as to the level of ordinary skill in the art. See Reply 8–9 (citing Ex. 1057 ¶¶ 23–26). Claim 1 recites, for example, “intangible data elements representing words,” including “effect data elements representing at least one among verbs standing alone and in combination with other words.” Ex. 1001, 35:31–33 (claim 1). Other claims recite, for example, “linked words,” “dictionary routine for automatically classifying and storing words,” “dictionary routine links all sets of synonyms,” “words having at least two different meanings.” See, e.g., Ex. 1001, 36:12 (claim 12), 36:41–42 (claim 14), 36:47–48 (claim 16), 36:52–53 (claim 17), 36:64–65 (claim 19). In the Sur-reply, Patent Owner argues that these words in the claims “are, at most, high school level grammar concepts,” so “[n]o complex linguistic or lexicographic knowledge is needed to understand or implement these claims.” Sur-reply 5. However, Petitioner is not asserting that complex knowledge is necessary for a person of ordinary skill in the art, and Patent Owner’s arguments appear to at least somewhat concede that a person of ordinary skill in the art would have had some linguistic or lexicographic knowledge.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “’680 patent, and focus entirely on the purported database design and functionality of the ’680 patent, without further explanation. Moreover, although Dr. Ranka testifies that “LLL is used to interpret or organize text according to agreed-upon rules” and “can be useful in identifying parts of speech in sentences and the like” (e.g., groups of text) (Ex. 2003 ¶ 18), Patent Owner does not acknowledge that that is precisely what the ’680 patent describes. See, e.g., Ex. 1001, 3:28–32 (“The MINDBASE system can also differentiate between multiple uses of the same word for different parts of speech. For example, some words like ‘book’ can be a noun, verb, or an adjective.”); see Reply 9. We are also persuaded by Petitioner’s arguments in Reply, supported by testimony from Dr. Jansen, as to how a person of ordinary skill in the art would have gained LLL experience in June 1997, and credit this testimony. See Reply 9–10 (citing Ex. 1057 ¶¶ 14, 29– 31). Moreover, Petitioner provides testimony from Dr. Jansen regarding the level of ordinary skill as reflected in the prior art that explains how its proposed level of skill in the art relates to the ’680 patent. See Ex. 1002 ¶¶ 56–101; e.g., Ex. 1002 ¶ 56 (“[Natural language processing] systems utilize lexical databases like the database disclosed by the ’680 Patent.”); ¶ 58 (“That basic premise [a theory and system of natural language processing] tracks exactly the Mindbase technology, which claims to put ‘[t]he mind’s view of a data structure . . . directly into a computer.’”) (citing Ex. 1001, Fig. 1a); ¶ 73 (“those skilled in the art of [natural language processing] were implementing systems that performed the same functions as the challenged claims of the ’680 Patent . . . [and] lexical databases that categorized words by parts of speech and analyzed the relationship between those words were recognized as a central part of any [natural language processing] system”). Patent Owner contends that Dr. Jansen’s testimony does not meet Petitioner’s burden because it is wholly conclusory. PO Resp. 8–9. According to Patent Owner, Dr. Jansen provides only a single citation to the ’680 patent (to Figure 1(a)), which is insufficient to show that the ’680 patent includes teachings equivalent to lexical databases, computational linguistics, and computational lexicography. Id. We disagree with Patent Owner’s arguments. Petitioner provides over 55 paragraphs of testimony from Dr. Jansen in support of its proposed level of ordinary skill in the art. See Ex. 1002 ¶¶ 56–101; see also Ex. 1057 ¶¶ 23–31. Throughout this testimony, which is directed to a discussion of the knowledge of a person of ordinary skill in the art, Dr. Jansen refers back to the ’680 patent in discussing natural language processing and lexical databases. See, e.g., Ex. 1002 ¶ 56 (“[Natural language processing] systems utilize lexical databases like the database disclosed by the ’680 Patent”), ¶ 58 (“[t]hat basic premise [a theory and system of natural language processing] tracks exactly the Mindbase technology, which claims to put ‘[t]he mind’s view of a data structure . . . directly into a computer.’”), ¶ 59 (“[l]ike the ’680 Patent, the database described by Pin-Ngern is organized by parts of speech, and ‘includes noun, verb, adjective, and adverb sections.’”), ¶ 73 (“Thus, well before 1997, those skilled in the art of [natural language processing] were implementing systems that performed the same functions as the challenged claims of the ’680 Patent.”). And, as Patent Owner acknowledges, Dr. Jansen cites to Figure 1(a) of the ’680 patent, which is “a pictorial description of” the “MINDBASE format” which “is based on the completely detailed information people have in their minds instead of the ‘verbal shorthand’ that people generally use when speaking or writing.” Ex. 1001, 2:66–3:2 (“FIG. 1 is a pictorial description of this process.”). We, therefore, find that the record more strongly supports Petitioner’s” slip op. at 19

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

    “analogous art to the claimed invention. PO Resp. 9–11. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’. . . –– in other words, common sense –– in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.”); In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).” slip op. at 21

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

    “Only terms that are in controversy need to be construed, and then “only to the extent necessary to resolve the controversy.” See 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, including “dictionary routine” and “automatically classifying and storing.” As will be discussed below in connection with the analysis of claim 14 (Section III.E.7), we determine that, whether these terms are construed in the sense of using a dictionary lookup function, or initially creating the dictionary, Petitioner has not shown by a preponderance of the evidence that Conlon teaches these limitations.” slip op. at 25

  Patent outcomesUS 6,665,680 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,665,680
• Google LLC v. Mindbasehq, LLCSome claims unpatentable
  PTAB · Jan 6, 2023 · IPR2021-01251 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–13, 20–32, 41, and 42 are unpatentable as obvious; claims 14–19 and 33–46 were not shown unpatentable because the cited combinations fail to teach required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We, therefore, find that the record more strongly supports Petitioner’s proposed definition of ordinary skill in the art, rather than Patent Owner’s, which appears to selectively ignore large portions of the description provided in the ’433 patent. We, therefore, find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected in the ’433 patent and by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, although we apply Petitioner’s proposed level of ordinary skill in the art, we would reach the same conclusion under Patent Owner’s proposal.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Moreover, Petitioner provides testimony from Dr. Jansen regarding the level of ordinary skill as reflected in the prior art that explains how its proposed level of skill in the art relates to the ’433 patent. See Ex. 1002 ¶¶ 56–101; e.g., Ex. 1002 ¶ 56 (“[Natural language processing] systems utilize lexical databases like the database disclosed by the ’433 Patent.”); ¶ 58 (“That basic premise [a theory and system of natural language processing] tracks exactly the Mindbase technology, which claims to put ‘[t]he mind’s view of a data structure . . . directly into a computer.’”) (citing Ex. 1001, Fig. 1a); ¶ 73 (“those skilled in the art of [natural language processing] were implementing systems that performed the same functions as the challenged claims of the ’433 Patent . . . [and] lexical databases that categorized words by parts of speech and analyzed the relationship between those words were recognized as a central part of any [natural language processing] system”). Patent Owner contends that Dr. Jansen’s testimony does not meet Petitioner’s burden because it is wholly conclusory. PO Resp. 8–9. According to Patent Owner, Dr. Jansen provides only a single citation to the ’433 patent (to Figure 1(a)), which is insufficient to show that the ’433 patent includes teachings equivalent to lexical databases, computational linguistics, and computational lexicography. Id. We disagree with Patent Owner’s arguments. Petitioner provides over 55 paragraphs of testimony from Dr. Jansen in support of its proposed level of ordinary skill in the art. See Ex. 1002 ¶¶ 56–101; see also Ex. 1057 ¶¶ 23–31. Throughout this testimony, which is directed to a discussion of the knowledge of a person of ordinary skill in the art, Dr. Jansen refers back to the ’433 patent in discussing natural language processing and lexical databases. See, e.g., Ex. 1002 ¶ 56 (“[Natural language processing] systems utilize lexical databases like the database disclosed by the ’433 Patent”), ¶ 58 (“[t]hat basic premise [a theory and system of natural language processing] tracks exactly the Mindbase technology, which claims to put ‘[t]he mind’s view of a data structure . . . directly into a computer.’”), ¶ 59 (“[l]ike the ’433 Patent, the database described by Pin-Ngern is organized by parts of speech, and ‘includes noun, verb, adjective, and adverb sections.’”), ¶ 73 (“Thus, well before 1997, those skilled in the art of [natural language processing] were implementing systems that performed the same functions as the challenged claims of the ’433 Patent.”). And, as Patent Owner acknowledges, Dr. Jansen cites to Figure 1(a) of the ’433 patent, which is “a pictorial description of” the “MINDBASE format” which “is based on the completely detailed information people have in their minds instead of the ‘verbal shorthand’ that people generally use when speaking or writing.” Ex. 1001, 2:65–3:2 (“FIG. 1 is a pictorial description of this process.”). We, therefore, find that the record more strongly supports Petitioner’s proposed definition of ordinary skill in the art, rather than Patent Owner’s, which appears to selectively ignore large portions of the description provided in the ’433 patent. We, therefore, find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected in the ’433 patent and by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, although we apply Petitioner’s proposed level of ordinary skill in the art, we would reach the same conclusion under Patent Owner’s proposal.” slip op. at 19

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

    “As discussed above, we are not persuaded that the ’433 patent is as limited as Patent Owner argues. Regardless, Conlon was published in the Information Processing & Management journal, and relates to constructing a lexical database, including the organization of the lexical database and the design of the tables that comprise the database. Ex. 1005, 415 (Abstract). As Petitioner points out, Conlon uses an Oracle RDBMS to store and collect information, and manipulate databases using Oracle’s SQL forms. Reply 11 (citing Ex. 1057 ¶ 55). Miller’s WordNet is described as “Related Research” in Conlon, and Beckwith is related to WordNet. Ex. 1005, 417; Ex. 1016, 302 (stating in the Abstract “WordNet is the lexical database; LexPert is the suite of software tools used to build and access the database”); see also Ex. 1057 ¶¶ 56–57. We are persuaded by, and agree with, Petitioner’s arguments that Conlon, Miller, and Beckwith all are in the same field of endeavor as the ’433 patent. See Reply 10–12. Patent Owner also argues that there are “four reasons to show that [Conlon, Beckwith, and Miller] are not reasonably pertinent to a [person of ordinary skill in the art] of the ’433 Patent.” PO Resp. 9–10. These four reasons are: 1) There is no literal mention of the technology of the proffered prior art within the ‘433 Patent. 2) There is no mention of innovating database system technology within the proffered prior art. 3) [Petitioner] has not shown that it is possible to substantively relate the ‘433 Patent disclosure with the technology of the proffered prior art. 4) Dr. Ranka, a data systems expert both currently and in 1997, provides extensive evidence that the technology of the ‘433 Patent, as well as a POSITA, do not relate to the technology of the proffered prior art. PO Resp. 9–10. Patent Owner again contends that “[t]he art of the ’433 Patent pertains to creating and managing a computer database system,” but Patent Owner does not provide further explanation as to the problem faced by the inventor of the ’433 patent. See id. at 10. Rather, Patent Owner’s arguments essentially repeat its arguments made with respect to the level of ordinary skill in the art, which, as discussed above, we do not find persuasive. As Petitioner points out, one problem faced by the inventor of the ‘433 patent “was storing and relating a particular type of data in a database.” Reply 12 (citing Ex. 1057 ¶¶ 28, 58–59). For the reasons set forth by Petitioner, which are unrebutted by Patent Owner, we also agree that Conlon, Beckwith, and Miller are reasonably pertinent to this problem. See id. Accordingly, we determine that Conlon, Beckwith, and Miller are” slip op. at 22

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

    “Only terms that are in controversy need to be construed, and then “only to the extent necessary to resolve the controversy.” See 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term, including “dictionary routine” and “automatically classifying and storing.” As will be discussed below in connection with the analysis of claim 14 (Section III.E.7), we determine that, whether these terms are construed in the sense of using a dictionary lookup function, or initially creating the dictionary, Petitioner has not shown by a preponderance of the evidence that Conlon teaches these limitations.” slip op. at 24

  Patent outcomesUS 6,510,433 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,510,433
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949

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.