• Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision

  Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.

  RulingsFinal written decision

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

    “F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11

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

    “have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22

  • 112 supportDecided for patent owner

    “Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24

  Patent outcomesUS 10,514,711 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 10,514,711
• 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
• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Apr 12, 2024 · IPR2023-00045 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Jones and/or Doo; claim 5 was not shown unpatentable because the obviousness grounds lacked adequate motivation to combine.

  RulingsFinal written decision

  • Skill levelOther

    “A. Level of Ordinary Skill in the Art” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “2. “augmentation tag” Petitioner proposes the following construction for “augmentation tag”” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner persuades us that Jones discloses limitation” slip op. at 31

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

    “reasoning why the POSITA would be motivated to combine, ‘what was known in the art at the relevant time,’ whatever that may be.” PO Resp. 42. We agree. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). Rather, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the” slip op. at 53

  Patent outcomesUS 10,945,807 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,945,807
• Apple Inc. v. Mozido, Inc.Some claims unpatentable
  PTAB · Jan 2, 2024 · IPR2022-01150 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6–11, 13–18, 20, and 21 are unpatentable as obvious over Easterly and Luz; claims 5, 12, and 19 were not shown unpatentable.

  RulingsFinal written decision

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

    “Petitioner asserts that “no claim term requires express construction.” Pet. 12. During trial, Patent Owner did not provide any explicit claim constructions. See PO Resp. 14. Patent Owner, however, asserts “the preamble is limiting because it provides necessary antecedent basis for ‘the computer system’ which is recited later in the claim.” Id. As demonstrated in our analysis below, we need not construe any claim terms or phrases to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Specifically, we need not determine whether the “computer system” recited in the preamble should be treated as limiting, because, even if it were, Petitioner demonstrates how Easterly satisfies this claim feature. See infra Section II.D.3a.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in August of 2012 would have had a working knowledge of the software arts that are pertinent to the ’785 patent. That person would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of software programming. Lack of work experience can be remedied by additional education, and vice versa. definition of the level of skill in the art as Petitioner, asserting that a person of ordinary skill in the art as of the effective filing date of the ’785 Patent would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development involving network-based monetary transaction systems. . . . Lack of work experience can be remedied by additional education, and vice versa. . . . Appropriate experience could substitute for education. PO Resp. 1 (citing Ex. 2001 ¶ 37). 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 ’785 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for petitioner

    “6 In the Sur-reply, Patent Owner presents the following new arguments for the first time: (1) “[t]he Petition fails to explain why a merchant system that already knows its own merchant preferences would need to encode this information into a barcode so that the same merchant system can apply a set of rules with those preferences to identify the newly selected network;” (2) the Petition “fails to meet the claim language, which requires that the selected debit network be identified in the scannable code, rather than something that the merchant system figures out on its own by applying rules to other debit networks identified in the scannable code;” and (3) “[t]he Petition has failed to meet its burden to demonstrate by a preponderance of the evidence that the relied on references fairly suggest including the selected debit network in combination with the customer preferred debit network and merchant preferred debit network in the claimed scannable code, as required by the Challenged Claims.” PO Sur-reply 14–16 (quoting Pet. 41–42). Patent Owner does not identify arguments in the Reply to which these Sur-reply arguments are responsive. See id. Patent Owner’s belated new arguments exceed the proper scope of a sur-reply and are not considered in rendering this Final Written Decision. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply . . . .”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG,” available at https://www.uspto.gov/ TrialPracticeGuideConsolidated) 73–74 (“Sur-replies should only respond to arguments made in reply briefs . . . .”), 74 (“a reply or sur-reply that raises a new issue . . . may not be considered.”)” slip op. at 25

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

    “combining prior art elements according to known methods to yield predictable results. See Pet. 21 (citing Ex. 1003 ¶ 50). Petitioner asserts that the combination is explicitly suggested by Easterly because “Easterly’s barcode ‘contains all of the data required to authenticate, authorize, clear, and settle a transaction,’” and is “‘able to incorporate information sufficient to identify the parties to a transaction and all other relevant information regarding the transaction.’” Id. (quoting Ex. 1005 ¶¶ 18, 20) (emphasis omitted); see Pet. 22 (similar argument, quoting Ex. 1005 ¶ 18). According to Petitioner, “because Easterly notes that price is pertinent to the transaction, and that the barcode includes all the data required to process the transaction, or relevant to the transaction, it would have been obvious for the barcode to include the total price.” Pet. 21 (citing Ex. 1003 ¶ 51). Petitioner also asserts that a person of ordinary skill in the art “would have understood would be important and thus obvious to include within the barcode that is used at point-of-sale terminals.” Pet. 22 (citing Ex. 1003 ¶ 52). According to Petitioner, [g]iven Easterly’s suggestion that the barcode includes the total price and items subject to a transaction, along with Luz’s explicit teaching of a barcode including such information, a [person of ordinary skill in the art] would have found it obvious for Easterly’s barcode to include price and items of the transaction. . . . Including such information as the total price would have yielded the predictable result of having the barcode include data that is relevant to the transaction. Pet. 22–23 (citing Ex. 1003 ¶ 54). Based on the entire record, including Petitioner’s citations to Easterly, Luz, and Dr. Houh’s testimony (Ex. 1003), we are persuaded by a preponderance of the evidence that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art at the time of the invention to include a total payment amount that is to be paid in the embedded payment information of Easterly’s barcode. See Pet. 21–25, 34–35; KSR, 550 U.S. at 418.” slip op. at 15

  Patent outcomesUS 9,189,785 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,189,785
• Microsoft Corporation v. Throughputer, Inc.Some claims unpatentable
  PTAB · Sep 18, 2023 · IPR2022-00574 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Stevens and Smetana, with Daly added for claim 2; claims 8–14 and 21–24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “science, computer engineering, or a related field, and 2-3 years of practical computer programming or engineering experience, including experience designing or researching parallel processing systems.” Pet. 6–7 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill, and Dr. Smith’s testimony is based on a similar definition. See Ex. 2002 ¶ 15. We adopt Petitioner’s definition of the level of ordinary skill in the art and we apply it in our obviousness evaluations below. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’353 patent and the asserted prior art.” slip op. at 8

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

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., 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 9

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

    “h. Conclusion for Claim 1 Petitioner has persuasively shown that the combination of Stevens and Smetana teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references. Thus, regarding claim 1, we determine that Petitioner has shown, by a preponderance of the evidence, that the claimed invention as a whole would have been obvious over the combination of Stevens and Smetana.” slip op. at 25

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

    “We find that Smetana teaches the implementation of multiplexers in hardware. See, e.g., Ex. 1005, 2:35–37, 2:60–4:3, Fig. 2. We also find that Stevens teaches matrices/nodes 150/800 that are sometimes dedicated to a particular task. See, e.g., Ex. 1003 ¶¶ 112–113; Ex. 1004 ¶¶ 95, 97, 133– 134, 137, 190. Furthermore, Petitioner persuasively shows that an ordinarily skilled artisan would have implemented Stevens’s multiplexers 280 and 955 as hardware multiplexers based on the teachings of Smetana to obtain the benefits of reduced propagation delay and reduced power consumption. See, e.g., Ex. 1003 ¶¶ 74–75; Ex. 1005, 1:13–18. We note that Stevens already describes the ACE as an integrated circuit hardware platform (see Ex. 1004 ¶¶ 2–3, 5), which supports that an ordinarily skilled artisan would have expected success in implementing the components of the ACE, such as Stevens’s multiplexers, as hardware resources based on Smetana’s teachings. See Pet. 27 (citing, inter alia, Ex. 1003 ¶¶ 74–75, 111).” slip op. at 23

  Patent outcomesUS 10,318,353 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,318,353
• PNC Bank N.A. v. United Services Automobile AssociationSome claims unpatentable
  PTAB · May 10, 2023 · IPR2022-00076 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1 and 8–20 are unpatentable as obvious; claims 2–7 were not shown unpatentable because the petitioner did not establish motivation to combine for their error-processing limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field” and “two years of prior experience with image capturing/scanning technology, involving transferring and processing of image data to and at a server.” Pet. 14 (citing Ex. 1002 ¶ 45). Petitioner further asserts that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. For purposes of the Institution Decision, we adopted Petitioner’s proposal (Inst. Dec. 16), and neither party alleges that a different level of ordinary skill should be applied in this proceeding (see PO Resp. 5; Pet. Reply). In this Decision, we again adopt the level of ordinary skill proposed by Petitioner. We are satisfied that it generally comports with the level of and the asserted prior art. Accord Inst. Dec. 15–16.” slip op. at 11

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

    “In the Petition, Petitioner states that it is unnecessary to construe any claim terms or phrases (Pet. 12–14), but for two phrases in claim 1, Petitioner specifically argues that the prior art teaches or suggests the phrase under each of two alternate meanings (id. at 34–35, 37). In the Institution Decision, we agreed with Petitioner’s primary understanding of these phrases and, as a result, did not reach the alternative contentions. Inst. Dec. 33 n.18, 38 n.21. At trial, Patent Owner states that claim construction is unnecessary to resolve the issues disputed in this proceeding. PO Resp. 6; Tr. 46:4–16. Petitioner agrees, but contends that Patent Owner’s arguments regarding dependent claim 3 are premised on a narrowing construction of one of its terms. Tr. 15:4–16:2. Patent Owner contends that the plain and ordinary meaning of the terms in that claim should apply. Id. at 46:12–16. We agree that it is not necessary to expressly construe any claim terms or phrases in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • BurdenNot shown unpatentable

    “motivated to add error processing to Garcia’s mobile phone so that it could address errors before transmitting the check image in order “to avoid wasting communications resources and adding delays.” Pet. 42. But, Petitioner does not support this rationale with a persuasive explanation or evidence. Indeed, we assume that Petitioner’s theory is that the error checking at the mobile device would have conserved bandwidth and reduced delay because it would have allowed the mobile device to identify some unsuitable images before they were sent to the payee bank; however, the Petition does not actually include an explanation to this effect. Rather, it simply states that an ordinary artisan would have known that mobile telephone networks (such as that used by Garcia) “are bandwidth and resource-constrained, and that communications over such networks takes time.” Id.; see also Ex. 1002 ¶ 115. However, all networks have bandwidth and resource constraints, and all communications take time, and neither the Petition nor Dr. Mowry explain why these considerations would have been relevant to an ordinary artisan implementing Garcia. Indeed, the Petition next asserts that “Byrne provides the requisite solution to this problem” (Pet. 42), but neither the Petition nor Dr. Mowry identify any problem. For example, Dr. Mowry does not testify that an ordinary artisan would have expected Garcia’s system to consume excessive bandwidth or incur for claim 2). In addition, Petitioner recognizes that the verification process is performed by the payee bank in Garcia, yet does not address the fact that its proposal would apparently shift a portion of the verification process to the mobile phone. See Pet. 40–44. Dr. Mowry’s trial testimony casts further doubt on Petitioner’s rationale for this claim. Dr. Mowry testifies that conserving bandwidth would “potentially” have been one of the goals of an ordinary artisan “depend[ing] on how precious their resource is.” Ex. 2020, 68:12–24. But Dr. Mowry “wouldn’t necessarily characterize [Garcia] as bandwidth intensive.” Id. at 76:13–23. In addition, he disagreed that “in the Garcia system, the motivation would have been to shift it to the client side for the verification,” noting simply that “[t]here are tradeoffs” associated with doing the verification processing on either the client or the server. Id. at 241:22– 242:13. Petitioner attempts to limit the impact of Dr. Mowry’s answers (Pet. Reply 16); however, the fact remains that Petitioner has the burden of proof, and it does not identify persuasive evidence to support its contention. Petitioner’s Reply asserts that these considerations were “particularly important in 2006, when 3G bandwidth was at a premium” (id. at 22 (citing Ex. 1029 ¶ 49)), but neither Petitioner nor Dr. Mowry provide analysis or evidence to support this conclusory assertion. Moreover, the Petition also fails to address whether the proposed combination would have, in fact, conserved communications resources or reduced delays. In Petitioner’s proposed combination, Byrne’s thin client application would be downloaded to Garcia’s mobile phone at each use (which would require communication resources and incur latency), but the Petition fails to address whether the net result of the proposed combination 148:1 (Dr. Mowry agreeing that the impact of downloading the thin client is not discussed in his report). Moreover, Garcia touts the “speed” of its process, stating that its “immediate processing . . . allows the immediate availability in the user’s account” (Ex. 1003, 7:18–8:3), which indicates that an ordinary artisan would not have perceived a problematic delay in Garcia’s system. Petitioner’s attempt to shift the burden to Patent Owner to determine whether or not its purported benefits would be realized (see Pet. Reply 17) is unavailing. In its Reply, Petitioner cites testimony from Dr. Mowry (see Ex. 1029 ¶ 37), but it simply compares the size of a compressed image with the size of a “large” application. This evidence does not outweigh the other evidence above, and it was submitted too late to remedy the Petition. See supra § II.A.; see also Trial Practice Guide 73 (explaining that a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability”). Finally, on this record, we are also not persuaded by Petitioner’s” slip op. at 60

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “would have been motivated to implement Garcia’s application by downloading, onto the mobile device, a thin client application, as disclosed by Byrne. See Pet. 19–25. Byrne touts the benefits of downloading a thin client rather than storing an application on a user’s device (Ex. 1004 ¶¶ 45– 46; see also id. ¶¶ 47–48), and Dr. Mowry testifies that an ordinary artisan would have understood downloading a thin client to be a well-known way of distributing software in the relevant time period and suited for mobile devices (Ex. 1002 ¶¶ 64–65, 70). In addition, Dr. Mowry testifies that a thin client improves security and ease of software maintenance. Id. ¶ 65 (citing Ex. 1004 ¶¶ 46–47); see also Ex. 1033, 140:11–141:2 (Dr. Creusere agreeing that thin clients “dramatically simplif[y]” software maintenance), 143:13–20 (agreeing that security is important for financial data); Ex. 1005 ¶¶ 20–21 (evidence that the general background knowledge in the art identifies security as a concern for remote check deposit).14 In addition, we agree with Petitioner (see Pet. 21–22; Ex. 1002 ¶¶ 66, 72) that an ordinary artisan would have understood such an implementation to apply a known 14 Patent Owner’s argument that security and software maintenance would have instead weighed against the proposed combination (see, e.g., PO Sur-reply 9–10) is untimely because it was not advanced in the Response and is not fairly responsive to the Reply. See supra § II.A; Pet. Reply 15–16 (noting that the Response had not addressed these issues). Moreover, even if this argument had been properly raised, it would not be persuasive because Patent Owner does not identify persuasive evidence to support its position. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). (Garcia’s mobile phone) with predictable results. We are also persuaded that a person of ordinary skill in the art would have been motivated to implement Garcia’s application such that the application provides a user-interface and controls the image capture device, as disclosed by Byrne. See, e.g., Pet. 22–23. Garcia suggests that the application should perform these functions (see Ex. 1003, 5:1–6:10, 9:19– 10:18), and we credit Dr. Mowry’s testimony that an ordinary artisan would find this desirable (see Ex. 1002 ¶¶ 65, 67). Moreover, the references lend themselves to the combination because Garcia and Byrne both describe remotely depositing a check via the Internet using software on a user’s device that opens an interactive session, and both perform substantially similar steps. See Pet. 22–23; Ex. 1003, 9:21–10:3, 10:10–18, 11:7–15; Ex. 1004 ¶¶ 41, 48, 174–175, 177–178. Finally, Dr. Mowry testifies that the ordinary artisan would have had a reasonable expectation of success in implementing the combination, and he provides supporting analysis and evidence. Ex. 1002 ¶¶ 68–72; see also Ex. 1029 ¶¶ 38–39. We credit this testimony from Dr. Mowry because it draws reasonable inferences and is supported by the cited evidence.” slip op. at 25

  Patent outcomesUS 10,769,598 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,769,598
• Forescout Technologies, Inc. v. Fortinet, Inc.Some claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 15, and 16 are unpatentable as obvious over Mahaffey; the other challenged claims were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal on the level of ordinary skill.” slip op. at 7

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

    “We find that the specification, therefore, supports Patent Owner’s argument that the term “web content filtering” differs from “web filtering”” slip op. at 10

  • BurdenDecided for patent owner

    “particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring IPR petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)) (emphasis added). This burden does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an IPR). By not providing a claim construction for a key term, “web content filtering,” Petitioner failed to live up to its obligation to provide an understandable explanation of the element-by-element specifics of the unpatentability challenges, including the particular portions of prior art supporting those challenges. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)– (4); Harmonic Inc., 815 F.3d at 1363–64; Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intel. Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)); see also MModal LLC v. Nuance Communicatons, Inc., 846 Fed. Appx. 900, 906 (Fed. Cir. 2021) (non-precedential).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by these belated arguments, as they are based entirely on testimony by Dr. Cole as to what a person of ordinary skill “would understand” that is unsupported by any citations to Syvanne or other evidence of record. Such unsupported opinions are not entitled to any weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Consolidated Trial Practice Guide 35 (November 2019)8 (“The Board has broad discretion to assign weight to be accorded expert testimony. . . . However, the testimony must be based on sufficient facts and data.”); Fed. R. Evid. 702(b). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications. In other words, 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. substitute for disclosure in a prior art reference itself.” Consolidated Practice Guide at 36.” slip op. at 26

  Patent outcomesUS 9,894,034 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,894,034
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

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

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

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

    “Accordingly, we find that the record does not support construing” slip op. at 32

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

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

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

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

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

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

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

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515

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.