- PTAB · Aug 27, 2025 · IPR2025-00574 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on claim 1 over Choe and Workman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Skill levelOther
“would have had a Bachelor’s in Computer Science with a focus on computer/machine vision, and at least two years of experience with each of: (1) machine learning (including neural network) methods as applied to machine/computer vision and (2) classical machine/computer vision algorithms (e.g., edge detection, line identification, computation of camera parameters from horizon line, etc.)” and that additional education “could serve as a substitute for the experience requirement.” Pet. 7–8 (citing Ex. 1003 ¶ 77). Patent Owner disagrees with Petitioner’s definition and asserts that a POSITA “would have a bachelor’s degree in engineering or computer science with one- or two-years training and/or experience in design of software for camera/sensor systems in the automotive industry.” Prelim. Resp. 12 (citing Ex. 2003 (Declaration of Scott Andrews) ¶ 35). We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should the parties continue to disagree regarding the level of ordinary skill in the art during trial, we encourage the parties to explain how an automotive-focused definition, or the lack thereof, would affect any obviousness analysis in our final written decision. B. slip op. at 5
- Expert testimonyOther
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,875,580 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentablePTAB · Oct 27, 2022 · IPR2021-00830 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Keagy, Miller, and the knowledge of an ordinary skilled artisan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“‘Autonomic’ refers to an ability for a cloud computing environment to manage its own operations with little or no governance by hand from any user or system administer. ‘Autonomic scaling’ therefore refers to an ability of a cloud computing environment to manage its own scaling operations with little or no governance by hand from any user or system administer. This paper describes autonomic scaling in the sense of adding and removing instances of virtual machines and their data processing applications as data processing workload increases and decreases with a cloud computing environment. Ex. 1001, 2:35–45.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“iii. Other terms After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to our decision to construe any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that an ordinary skilled artisan “would have had a bachelor’s degree in computer science, computer engineering, or a related discipline and three years of experience in the relevant technical field— cloud computing, computer networks and systems—or the equivalent.” Pet. 18 (citing Ex. 1003 ¶ 48). Petitioner further states that “[a] POSITA also would have been aware of and generally knowledgeable about the structure 4 The parties have not introduced any evidence concerning secondary considerations. levels of education may substitute for less experience, and vice versa.” Id. at 18–19. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 8. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’612 patent and the prior art of record.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For the following reasons, we determine that Petitioner persuasively shows that an ordinary skilled artisan would have combined Keagy and Miller in the manner proposed, and Patent Owner’s contentions are unavailing. We look to Dr. White’s testimony in connection with analyzing Patent Owner’s contentions. With respect to deploying additional instances of a VM, Dr. White points to page 37 of the Petition where Petitioner argues that “Keagy contains a similar disclosure [to Miller]” of up-scaling VM resources. Ex. 2011 ¶ 105. Dr. White, however, specifically states his disagreement that Keagy discloses deploying an additional instance of a VM. Id. ¶ 106. Patent Owner also disputes that Keagy discloses deploying that Miller discloses deploying an additional instance of a VM. Id. at 28. As explained below in connection with limitation 1.C, Patent Owner’s argument that Miller does not disclose deploying an additional instance of VM is based on its claim construction that “deploying” requires “creating a new instance of a VM” that we did not adopt for the reasons stated in Section II.C. Id. Dr. White’s quibbles with Miller in this regard are also based on the same claim construction that we do not adopt. Ex. 2011 ¶ 107 (“Miller does not create any new instances of a VM”). As further explained in our analysis of limitation 1.C, assuming Patent Owner is correct concerning Keagy’s lack of disclosure of adding additional instances of a VM, Miller discloses deploying additional instances of a VM under the proper claim construction. Consequently, modifying Keagy with Miller’s disclosure of deploying additional instances of a VM does not entail adding a feature to Keagy that it already possesses. Pet. 69; Ex. 1003 ¶¶ 204–206. Dr. White’s testimony with respect to removing entire instances of a VM takes a similar tack. Dr. White points to page 70 of the Petition that “Keagy already discloses the termination and deletion of entire VMs.” Ex. 2011 ¶ 108 (citing Pet. 70). Dr. White specifically states his disagreement that Keagy has such a disclosure. Id. Petitioner relies on Dr. Jakobsson’s testimony at paragraphs 203 and 208. Pet. 70. In paragraph 208, Dr. Jakobsson directs us to his testimony in connection with, inter alia, limitation 1.D. In connection with limitation 1.D, Dr. Jakobsson testifies that “Keagy teaches the termination and deletion of entire VMs outside of the autonomic scaling context.” Ex. 1003 ¶ 128. Consequently, modifying Keagy with Miller to terminate entire VM instances in the context of to Keagy that it already possesses.” slip op. at 35
Patent outcomesUS 8,572,612 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,612 - Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentablePTAB · Oct 21, 2022 · IPR2021-00831 · APJ Sally C Medley · IPR · Final written decision
Claims 15–25 were shown unpatentable: claims 15–21 and 23–25 as obvious over Gelb and Tivoli, and claim 22 as obvious over Gelb, Tivoli, and Callaghan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin with the language of the independent challenged claims. Claim 15 recites “[a] method for handling files within a policy-based data management system, the method comprising.” Ex. 1001, 16:21–22. Claim 23 recites “[a] storage device storing computer code executable by a processor to carry out a method comprising.” Id. at 16:61–62. The remaining limitations of the independent claims are the same and directed to (1) providing a policy set with at least one service class rule; (2) receiving one or more attributes of a file from one of a plurality of clients, the clients comprising at least two different computing platforms; (3) applying the service class rule to the file to assign a service class to the file; and (4) conducting operations on the file in a manner according to the service class. Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a “distributed storage system,” a “storage area network system,” or a “networked, distributed system [environment].” Thus, even if Patent Owner were correct that an invention that involves a networked, distributed system environment dictates that the plurality of clients also be in the networked environment, the claims themselves don’t require a networked, distributed system environment. Indeed, the preamble of claim 23 recites “a storage device,” and the preamble of claim 15 recites a “data management system,” terms that are much broader than those the Patent Owner uses to describe “the invention.” PO Resp. 8–10. Although Patent Owner never explains what “clients in a networked environment” means, Dr. White testifies that “a person of ordinary skill in the art would have understood the ‘plurality of clients’ to refer to clients in a networked distributed systems environment, such that each challenged claim requires a networked environment where clients communicate through a network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that recites a “networked distributed systems environment,” a “networked environment,” or “clients communicating through a network.” The method claims are directed to performing certain steps to a file from one of a plurality of clients. No networking or clients communicating through a network is claimed or even shown to be relevant to what is claimed. Indeed, in urging us to narrowly construe the term “plurality of clients,” Patent Owner does not discuss the claim language at all. PO Resp. 8–10. But, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim language itself that would support Patent Owner’s construction of “plurality of clients,” and we find nothing that supports the argument.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“two different computing platforms.” Patent Owner contends that the limitation “computing platforms” should be construed to mean “operating systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing platforms” should be construed to mean “the combination of computer hardware and an operating system.” Pet. Reply 4–6. We understand that resolution of this issue is relevant only to Petitioner’s challenge based on Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a plurality of clients but not addressing Gelb in combination with Tivoli), 55– 59 (arguing that Devarakonda fails to disclose clients that comprise at least two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3, 25:22–26:23. For reasons explained below, we need not decide Petitioner’s challenge based on Devarakonda. Accordingly, for purposes of our Decision, we need not construe “computing platforms.” Other Terms We need not otherwise construe any other terms in the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, relying on the declaration testimony of Dr. Christopher Jules White, argues that a POSITA would have had “at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, along with two years of experience in the design, operation, or control of networked data management systems, and/or distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner further argues that “Dr. White’s opinions and the arguments in this paper apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing Ex. 2024 ¶ 49). We adopt Petitioner’s definition of the level of skill except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“construction for “plurality of clients” to mean “clients in a networked environment.” Thus, we disagree with Patent Owner that the claims reflect that the ’132 patent’s field of endeavor is distributed storage systems. During oral argument, Patent Owner represented that its “analogous art argument depends on the construction of clients in a networked environment . . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he lack of clients in a networked environment takes Gelb’s single-machine mainframe out of the ’132 Patent’s field of endeavor of distributed storage systems, which involves networked computers”). Accordingly, we determine that Patent Owner has failed to show that Gelb is not relevant to the obviousness analysis and agree with Petitioner that “Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore are analogous.” Pet. Reply 6.9” slip op. at 20
Patent outcomesUS 8,671,132 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,671,132 - Momentum Dynamics Corporation v. Witricity CorporationAll claims unpatentablePTAB · Oct 12, 2022 · IPR2021-01127 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–8 are unpatentable because Kanno anticipates them and renders them obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’635 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including an expert in the definition of the level of skill.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“We agree with Petitioner. The plain language of claim 1 is expansive, requiring only that the partially cancelled first magnetic field is “outside a spatial region through which power is transferred from the first source magnetic resonator to the device magnetic resonator.” The claim does not refer to a specific type of radiation, let alone far field radiation. The claim drafter deliberately chose the broader term “first magnetic field” rather than specifying “far field radiation.” We find nothing in the claim that points to a more restrictive interpretation of “first magnetic field.” The specification does not limit the partially canceled first magnetic field to far field radiation either, as it expressly contemplates that “the fields that need to be minimized or reduced can be either the far-field, or the near field (if the wavelength is much larger than the distance between the wireless power transfer system to the point of interest).” Ex. 1001, 51:33–37 (emphasis added). The specification could not be any plainer than this— referring explicitly to reducing the far field “or the near field.” Id.5” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. And Kanno discloses at least near-field cancellation by disclosing, for example, that angles “within the range of 90 to 180 degrees . . . minimized leakage of electromagnetic waves into the surrounding space effectively.” Ex. 1005, 28:36–41; Ex. 1003 ¶¶ 56 (citing, e.g., Ex. 1005, 28:18–42), 107 (similar), 111 (similar). Patent Owner does not dispute that Kanno teaches near-field cancellation. See, e.g., PO Resp. 9 (“reducing ‘near field strength’ as described in Kanno”). Thus, under the correct construction of this limitation as encompassing near-field radiation, far-field radiation, or both, we agree that Kanno teaches it. Not only that, but Patent Owner does not dispute Petitioner’s Reply argument that Kanno also discloses the same far-field cancellation as the ’635 patent, as Patent Owner neither filed a sur-reply nor addressed Petitioner’s Reply argument at the oral hearing. See Tr. 14:20–21 (resting on the briefs). And we agree with Petitioner’s argument, as supported by the unrebutted testimony of Dr. Arnold, that even under Patent Owner’s incorrect construction, Kanno teaches this limitation. Reply 6–7 (citing, e.g., Ex. 1003 ¶¶ 114–15). Dr. Arnold asserts that “[a] reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field.” See Ex. 1003 ¶ 114. Dr. Arnold explains in detail how these near and far fields relate to one another as follows: The term “near field” is a technical term that refers to the electromagnetic near field of an antenna, as opposed to the radiative “far field”. The near field for an electromagnetically short antenna is defined as a region within one electromagnetic wavelength of the antenna. The electrical frequency used in the real-world implementation of the power generator is 3 MHz. Id. 27:44-48. A frequency of 3 MHz corresponds to an electromagnetic wavelength of 100 meters. Here, the measurement distance of 5 meters is well within the near field range of 100 meters, and constitutes a near field measurement. A reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field Id. ¶ 114. In other words, if a field closer to an antenna is reduced, then the field farther from the antenna will be reduced too. This fact is unremarkable, as Dr. Arnold explains, “[t]he principles behind magnetic resonators to wirelessly transfer power have been known for over a century.” Id. ¶ 24.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Even in light of Patent Owner’s arguments, which we address below, we agree with Petitioner. We find that one of ordinary skill in the art would have combined Kanno’s Example 1 with its fundamental arrangement because the specific details in Example 1 and test data would have indicated to the skilled artisan the desirability of combining these portions of Kanno. As Dr. Arnold persuasively testifies, “a POSA would have been motivated to look to Example 1 because it provides those specific implementation details for circuit component types and values, as well as test data showing that the power generator achieves high power transfer efficiency while minimizing electromagnetic field leakage.” Ex. 1003 ¶ 150. He further testifies, “given that Kanno describes ‘Example 1’ as a real-world implementation, a POSA would have had a reasonable expectation of success that the power generator using those implementation details would work.” Id. We agree and credit this unrebutted testimony in support of Petitioner’s motivation to combine separate portions of Kanno.” slip op. at 31
Patent outcomesUS 9,306,635 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,306,635 - PTAB · Sep 21, 2022 · IPR2022-00457 · APJ Sally C Medley · IPR · Institution
The Board instituted IPR of claims 1–9, 11–19, 21, 23, 25, and 27, finding a reasonable likelihood that at least one challenged claim is obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Office during the prosecution of the ’440 patent in an IDS on November 24, 2014” and “the Examiner initialed Lahetkangas as being considered.” Prelim. Resp. 11 (citing Pet. 17; Ex. 1002, 69; Ex. 1011), 33. We agree that Lahetkangas was previously presented to the Office during prosecution of the ’440 patent. Ex. 1001, code (56); Ex. 1002, 69; see also Pet. 17 (Petitioner acknowledging that Lahetkangas was cited in an IDS). Accordingly, we determine that part one of the Advanced Bionics framework is satisfied. 3. Part Two of the Advanced Bionics Framework Patent Owner asserts that Petitioner has failed to show material error by the Examiner during prosecution. Prelim. Resp. 51. We disagree. As Petitioner points out, although the Examiner considered Lahetkangas in an IDS, Lahetkangas was not discussed in any Office Action or Response. Pet. 17–18. We find that Lahetkangas was not extensively evaluated during examination and was not the basis for a rejection. Petitioner has presented a sufficient showing that the Examiner overlooked disclosures in Lahetkangas that render obvious the challenged claims. See infra. We, therefore, agree with Petitioner that the Office erred in a manner material to the patentability of the challenged claims. Pet. 18–19.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’440 patent. See Pet. 3–4 (citing Ex. 1003 ¶ 70). Dr. Kakaes states that a person having ordinary skill in the art (POSITA) “would be someone who had a Master’s degree in Electrical Engineering, Applied Mathematics, Computer Science, Physics or equivalent.” Ex. 1003 ¶ 70. Citing Dr. Kakaes, Petitioner further states that the POSITA would have also had “three to five years of experience working with wireless digital communication systems” and that “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For purposes of this Decision, we need not expressly construe any claim term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). E. Asserted Obviousness of Claims 1–7, 9, 11–17, 19, 21, 23, 25, and 27” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Claim 18 depends from claim 11 and includes a similar limitation. Petitioner provides reasons for employing Wang’s “extended or aggressive MCS table (i.e., a second MCS table).” Pet. 65–70. We have reviewed Petitioner’s showing for dependent claims 8 and 18 and find such showing sufficiently persuasive at this stage of the proceeding. Id. Patent Owner does not contest claims 8 and 18 separately. Prelim. Resp. 63–64. We conclude that, based on the totality of the arguments and evidence currently in the record, Petitioner has sufficiently shown, for purposes of institution, that Lahetkangas and Wang with or without LTE TS 36.213 teach or suggest the limitations of claims 8 and 18, and that a person of ordinary skill in the art would have had reason to combine the references in the manner Petitioner proposes. Accordingly, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that challenged claims 8 and 18 would have been obvious over Lahetkangas and Wang with or without LTE TS 36.213.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,509,440 - PTAB · Sep 7, 2022 · IPR2022-00337 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–40 on all petitioned grounds, finding a reasonable likelihood of success on the §103 challenges, including obviousness over Bao and Feuersanger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–40 in the ’655 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As also explained in our patentability analysis below, Petitioner demonstrates a reasonable likelihood of prevailing in proving the challenged claims unpatentable as obvious over Kwon. See Pet. 48–83; infra §§ IV.F.2–IV.F.4. In doing so, Petitioner demonstrates that the Examiner erred in a manner material to the patentability of challenged claims when (1) rejecting the claims only due to obviousness-type double patenting and (2) failing to appreciate that Kwon ’790/Kwon teaches the claimed subject matter. See Ex. 1002, 134–41 (rejecting the claims only due to obviousnesstype double patenting and citing Kwon ’790 without explanation), 192–99 (allowing the claims after terminal disclaimer filed); Ex. 1003 ¶¶ 304–520; infra §§ IV.F.2–IV.F.4. Because Petitioner persuasively shows on this record that Kwon teaches the claimed subject matter, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. For these reasons, we decline to exercise our discretion under § 325(d) to deny institution.” slip op. at 16
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The descriptions of an ordinarily skilled artisan articulated by Petitioner and Patent Owner differ mainly in the educational level, i.e., “at least a Bachelor’s degree” according to Petitioner and “a Bachelor’s degree” according to Patent Owner. Pet. 6; Prelim. Resp. 8; see Ex. 1003 ¶ 20; Ex. 2001 ¶ 17. Based on the current record and for purposes of institution, we accept Patent Owner’s description of an ordinarily skilled artisan as consistent with the ’655 patent and the asserted prior art. If the prior art renders the claimed subject matter obvious to a person with less experience and less knowledge, then the prior art renders the claimed subject matter obvious to a person with more experience and more knowledge. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner “agrees with Petitioner that no claim terms require an express construction for the purposes of this proceeding.” Prelim. Resp. 9 (citing Pet. 6). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,454,655 - Apple Inc. v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Aug 31, 2022 · IPR2022-00456 · APJ Sally C Medley · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“claims 1, 2, 4, 7, 8, 10–14, 16, 17, and 19–21 of U.S. Patent No. 10,264,569 B2 (Ex. 1001, “the ’569 patent”). Paper 1 (“Pet.”). Telefonaktiebolaget LM Ericsson (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we decline to institute review of the challenged claims of the ’569 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Jonathan Wells, Petitioner offers an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill at the time of the ’569 patent. See Pet. 9–10 (citing Ex. 1003 ¶ 44). Dr. Wells states that a person having ordinary skill in the art (POSITA) “would have had a Master’s degree in Electrical Engineering, Applied Mathematics, Computer Science, Physics, or equivalent and three to five years of experience working with wireless digital communication systems including with the physical layer of such systems.” Ex. 1003 ¶ 44. Dr. Wells further testifies that “[a]dditional education might compensate for less experience, and conversely, significant additional experience might compensate for less education.” Id. Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. We adopt Petitioner’s definition of the level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a portion of which were previously and separately sent to the mobile station.” Ex. 1001, 8:43–45. Independent claims 13, 14, and 21 contain the same phrase. Id. at 9:16–18, 9:25–27, 10:24–26. Patent Owner’s arguments regarding why the prior art fails to meet the italicized phrase are based on an implicit construction that the phrase requires sounding signal configuration parameters that at least a portion of which were previously and separately sent to the mobile station by a base station. Prelim. Resp. 1–4, 9–13, 16–17, 19–22. We understand Petitioner also to construe the phrase to require sounding signal configuration parameters that at least a portion of which were previously and separately sent to the mobile station by a base station. Pet. 39–40, 46; Ex. 1003 ¶¶ 51, 79, 96 (“[t]he base station would send these predetermined transmission parameters before—and separately from—the mobile station sending power control preamble, as required by the claim”). The parties’ proposed construction is consistent with the Specification of the ’569 patent. Ex. 1001, 3:12–18, 5:40–58, 6:1–6, 7:1–7, 7:60–67, Fig. 5. Thus, for purposes of this Decision we construe “sounding signal configuration parameters that at least a portion of which were previously and separately sent to the mobile station” to mean “sounding signal configuration parameters that at least a portion of which were previously and separately sent to the mobile station by a base station.” For purposes of this Decision, we need not expressly construe any” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“station.” Ex. 1003 ¶ 51 (citing Ex. 1006, 21:7–8, 21:26). Dr. Wells concludes “[t]hus, Malladi teaches that the sounding signal is transmitted to the base station by the mobile station according to certain configuration parameters sent before and separately from the base station transmitting the uplink grant.” Id. The portions of Malladi cited describe a base station transmitting an uplink grant to an access terminal followed by transfer of a power control preamble from the access terminal. Ex. 1006, 21:7–13, 21:26, Fig. 12. Dr. Wells fails to explain how Malladi’s cited descriptions support the conclusion he makes that certain configuration parameters are sent to the access terminal before and separately from the base station transmitting the uplink grant, and we find that they do not. Thus, Dr. Well’s testimony in that regard is entitled to little weight. Moreover, such an unsupported conclusion is at odds with Dr. Wells’ further testimony addressing the disputed limitation, which makes different and separate assertions about the descriptions in Malladi and the ’931 Provisional. See Ex. 1003 ¶ 79.” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,264,569 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Aug 11, 2022 · IPR2021-00470 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–10 and 16–19 are unpatentable as obvious under § 103, principally over Bohbot and Gundlach, with additional grounds for claims 4, 8, 9, 17, and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“According to Petitioner, “no express constructions are required to institute review and find the Challenged Claims unpatentable.” Pet. 4. Patent Owner argues that it “has assigned the claim terms their plain and ordinary meanings as a POSITA would have understood them in the context of the ‘020 patent, unless otherwise noted herein.” PO Resp. 8. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“discloses that this is “due to [its] size.” Ex. 1004, 2:9–13 (emphasis added). More relevant to Petitioner’s proposed combination of Bohbot and Gundlach are Patent Owner’s arguments concerning the ease or lack of ease of detachment of the headset from a primary module having a recess as taught by Gundlach. We determine that a POSITA would have balanced concerns about the combination lacking ease of detachment against the need for effectively securing the headset to the primary module. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (stating that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Additionally, an obviousness determination does not turn on whether the proposed combination is the preferred or most desirable combination. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004); PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014). Further, even if Bohbot teaches a “suitable mechanism” of securing its headset via magnetic coupling as Patent Owner argues (see PO Resp. 12–13 (citing Ex. 2001 ¶ 95)), we determine that Bohbot would not have dissuaded a POSITA from more effectively securing its headset using the recess cited in Gundlach. See Pet. Reply 11 (“Gundlach provides a suitable option for semi-enclosed protection in the form of a contoured recess, and Bohbot does not teach away from the use of a contoured recess.”) (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); Ex. 1089 ¶ 28). Responsive to Patent Owner’s arguments, Dr. Cooperstock testifies that “Bohbot nowhere describes its headset as being easy and quick to detach ‘with one hand,’ and thereby being ‘readily available for use.’” Ex. 1089 ¶ 26. As Petitioner points out, “Bohbot’s magnetic attachments ‘make attachment and detachment easy’ but also ‘are powerful enough to make an effective attachment possible, thus avoiding a detachment that is so easy it could easily be removed by a person with malicious intentions, or an untimely detachment that would lead to loss of the headset.’” Pet. Reply 10 (quoting Ex. 1004, 3:26–4:5) (citing PO Resp. 14). We are persuaded by Petitioner’s contention and Dr. Cooperstock’s testimony that “[t]he miniature communication device (with attached headset) is likely to be hit by other objects, dropped, etc., making the semi-enclosed protection provided by [Gundlach’s] contoured recess further advantageous and complementary to Bohbot’s stated goal.” Ex. 1003 ¶ 35 (citing Ex. 1004, 4:3–5); see Pet. Reply 11 (citing Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017) (quoting PAR Pharm., 773 F.3d at 1197–98)) (“obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away’”).” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Further, even if Bohbot teaches a “suitable mechanism” of securing its headset via magnetic coupling as Patent Owner argues (see PO Resp. 12–13 (citing Ex. 2001 ¶ 95)), we determine that Bohbot would not have dissuaded a POSITA from more effectively securing its headset using the recess cited in Gundlach. See Pet. Reply 11 (“Gundlach provides a suitable option for semi-enclosed protection in the form of a contoured recess, and Bohbot does not teach away from the use of a contoured recess.”) (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); Ex. 1089 ¶ 28). Responsive to Patent Owner’s arguments, Dr. Cooperstock testifies that “Bohbot nowhere describes its headset as being easy and quick to detach ‘with one hand,’ and thereby being ‘readily available for use.’” Ex. 1089 ¶ 26. As Petitioner points out, “Bohbot’s magnetic attachments ‘make attachment and detachment easy’ but also ‘are powerful enough to make an effective attachment possible, thus avoiding a detachment that is so easy it could easily be removed by a person with malicious intentions, or an untimely detachment that would lead to loss of the headset.’” Pet. Reply 10 (quoting Ex. 1004, 3:26–4:5) (citing PO Resp. 14). We are persuaded by Petitioner’s contention and Dr. Cooperstock’s testimony that “[t]he miniature communication device (with attached headset) is likely to be hit by other objects, dropped, etc., making the semi-enclosed protection provided by [Gundlach’s] contoured recess further advantageous and complementary to Bohbot’s stated goal.” Ex. 1003 ¶ 35 (citing Ex. 1004, 4:3–5); see Pet. Reply 11 (citing Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017) (quoting PAR Pharm., 773 F.3d at 1197–98)) (“obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away’”). For the foregoing reasons, Patent Owner’s arguments do not undermine Petitioner’s showing. We determine that Petitioner’s rationale for combining Bohbot and Gundlach is persuasive for the reasons set forth above and is supported by sufficient rational underpinning in the record evidence and we adopt it as our own.” slip op. at 32
Patent outcomesUS 10,259,020 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,020
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.