• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentable
  PTAB · May 29, 2026 · IPR2025-00349 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Avellan did not disclose the claimed sequence of screen captures used to assemble a media stream.

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner submits a similar definition and does not dispute the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 22. No express finding is necessary. The level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA does not change our analysis or conclusions.” slip op. at 5

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

    “on ordinary and customary meaning. Pet. 14–15; PO Resp. 22. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “c. Analysis “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We are persuaded by Patent Owner’s argument that Avellan does not anticipate claim 1 because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 26–29. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. Sur-reply 21. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 26–29; Sur-reply 21.” slip op. at 8

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

    “All other challenged claims require the “generating” and “assembling” operations because they depend from claims 1, 12, or 17. Petitioner does not allege that the additional references—Durante, Ma, Suzuki, Wanamaker, Heikens, Matthews, or Wilsher—teach or suggest the “temporal sequence of screen captures” recited in claim 1. Rather, Petitioner’s reasoning in the challenges to the dependent claims pertaining to the screen captures mirror the rationale presented in the independent claim. See, e.g., Pet. 25 (arguing that Avellan’s screen captures correspond to the video content in the challenge to claim 2), 26–27 (arguing that Avellan obtains screen captures from a playback of a video on the webpage in the challenge to claim 4). Petitioner’s argument that Avellan teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103 depend on the reasoning and insufficiently supported characterizations of Avellan in the challenges based on 35 U.S.C. § 102, as discussed above. See Pet. 40–60. grounds based on anticipation under 35 U.S.C. § 102 or teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103, Petitioner has not met its burden to show that any challenged claim is unpatentable as anticipated by Avellan or obvious over any of the combinations of Avellan and the other cited references.” slip op. at 15

  Patent outcomesUS 10,123,074 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,123,074
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 10, 2026 · IPR2024-01116 · APJ Sharon Fenick · IPR · Final written decision

  Petitioner did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, or 230 unpatentable because the asserted combinations did not establish the claimed blurring …

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “(Ex. 1003), that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof,” and that “[a]dditional years of experience could substitute for an advanced-level degree (and vice-versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–30).” slip op. at 9

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

    “C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10

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

    “obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 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.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29

  Patent outcomesUS 10,656,754 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,754
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 10, 2026 · IPR2024-01115 · APJ Sharon Fenick · IPR · Final written decision

  Apple did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, and 230 unpatentable over the asserted Ahn combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In the Decision on Institution in each proceeding, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advancedlevel degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 15–16. Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9

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

    “C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10

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

    “obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31

  • BurdenNot shown unpatentable

    “(3) Conclusion For the reasons discussed above, Petitioner has not shown limitation 2.d to be taught, suggested, or otherwise rendered obvious by Ahn and Chaudhri. Thus, we determine that Petitioner does not show by a preponderance of the evidence that claim 2 would have been obvious over the combination of Ahn and Chaudhri.” slip op. at 32

  Patent outcomesUS 10,656,754 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,754
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision

  Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.

  RulingsFinal written decision

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

    “In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10

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

    “We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17

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

    “We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20

  Patent outcomesUS 10,225,479 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,225,479
• 3shape Medical A/S v. Sirona Dental Systems GmbHNo claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00481 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Mushabac did not anticipate claims 1–5 and 9–10, and the asserted combinations did not render claims 1–8 obvious.

  RulingsFinal written decision

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

    “We determine that only the following claim phrase requires explicit construction for purposes of this Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner provides evidence that a person of ordinary skill in the art (“POSA”) is someone with a D.M.D. (Doctor of Medicine in Dentistry or Doctor of Dental Medicine) or D.D.S. (Doctor of Dental Surgery) and at least several years of experience with 3-D technology used in dental implant treatment, planning, and surgery. Pet. 9–10 (citing Ex. 1004 ¶¶ 63–66). Alternatively, such a person may have a computer engineering degree or be a trained dental laboratory technician having substantial experience with 3-D technology and software applications used in dental implant treatment, planning, and surgery. Id. Patent Owner has accepted Petitioner’s definition of a POSA for purposes of this IPR. We adopt and apply Petitioner’s definition of a POSA in this Decision.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Analysis of “optical measuring of the visible surfaces of the jaw” Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Dr. Ganz agreed under cross-examination that “Mushabac optically measures the teeth [a]nd then it uses … bone sounding to measure the surfaces of the jawbone.” Ex. 2026, 252:11–20. When directly asked where a three-dimensional optical measuring of visible surfaces of the jaw was “stipulated” in Mushabac, Dr. Ganz could not identify any passage to support that assertion made in paragraph 100 of his Declaration. Id. at 248:16–252:20. We find Dr. Ganz’s cross-examination testimony to be highly persuasive and consistent with the disclosures in Mushabac and the testimony of Dr. Erickson. For the reasons given above, we determine that Mushabac does not expressly disclose an “optical” (light-based) measurement of the “visible surfaces of the jaw” in three dimensions, as recited in claim 1 of the ’006 patent.” slip op. at 16

  Patent outcomesUS 6,319,006 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01872 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 7, 11–14, 17, and 20–25 were not shown unpatentable because Lu did not teach providing resources to queued users of packet data.

  RulingsFinal written decision

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

    “1. Means-plus-function Terms Claims 11–14 and 17 recite several terms in means-plus-function format. Claim 24 recites several terms in the form of “logic for” performing the functions of parallel terms recited in claim 11. In the Institution Decision, we adopted Petitioner’s proposed constructions, set forth at pages 10–15 of the Petition, as our constructions for the means-plus-function terms of claims 11–14 and 17. Dec. 17–18. We also determined to treat the “logic for” terms of claim 24 as means-plus-function terms, see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015), and adopted Petitioner’s statement of the structure corresponding to the “logic for” terms (Pet. 10–13). Id. at 18. Patent Owner does not dispute these constructions. PO Resp. 8. On the complete record, we maintain these constructions.” slip op. at 8

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

    “Read in light of the Specification, “providing said communication resource to queued packet data users on a tier-by-tier basis,” as recited in claim 1, means providing the communication resource to queued users of packet data on a tier-by-tier basis. We are persuaded by Patent Owner that this is the only reasonable reading that is consistent with the Specification. Petitioner provides no examples in the Specification consistent with its reading. Although the preamble of claim 1 recites a “method of processing queued data packets,” this is consistent with the Specification’s general statement that the invention pertains to “an improved packet data queueing algorithm,” Ex. 1001, 9:3. We do not read this general statement in the preamble of claim 1 (or the similar preamble recitations in claims 11 and 24) to provide a basis for construing more specific language in the body of the claim in a manner inconsistent with the description in the Specification. In sum, the only reasonable reading of “queued packet data users,” in the context of the dependent claims, and in light of consistent description in the Specification, is queued users of packet data, not users of queued packet data.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “such as initial class queues 416–438, organized into high, medium, and low classes, are “a plurality of individual packet data queues.” Pet. 19–20. As to claim element 1[b], “determining a total number of data packets that can use an available communication resource,” Petitioner points to Lu’s description of using a weight-based scheduling scheme to transfer packets from one level queue to another. Id. at 23–24. Petitioner identifies the transmission capacity of the output link (e.g., 209) as the “available communication resource,” and contends that such weighted transfer during a cycle includes determining a total number of data packets that can be transferred for a cycle.5 Id. at 24. Petitioner further contends that Lu’s description of using subscriber weights based on subscriber volumes for particular classes teaches “allocating different weights to each tier of service based on a number of users requiring access to the available communication resource,” as recited in claim element 1[c]. Id. at 28–30. Regarding claim element 1[d], Petitioner argues that “[b]ecause the weights of Lu vary with the 4 We refer the claim elements 1[a]–1[e] as identified in Section I.E, above. 5 Patent Owner contends that Lu does not teach claim element 1[b]. PO Resp. 12–23. Because we decide that Petitioner has not shown that Lu teaches claim element 1[e], as detailed below, we do not decide whether Petitioner has shown that Lu teaches claim element 1[b]. available capacity (which in turn would affect the ‘total number of data packets that can use an available communication resource’), the weights of Lu consistently indicate how much (i.e., ‘proportion’) of the capacity (‘total number of data packets’) each class (i.e., ‘tier of service’) will receive.” Id. at 32.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s Reply argument is not simply rebuttal to the Patent Owner Response. Rather, it is an attempt to formulate a new prima facie case of obviousness. The Office has instructed that such improper Reply argument will not be considered: A reply may only respond to arguments raised in the corresponding opposition. [37 C.F.R.] § 42.23. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or 6 In the Institution Decision, we considered Petitioner’s argument and evidence (including Mr. Lanning’s testimony, Ex. 1006 ¶¶ 96–97) and determined that Petitioner did not present evidence sufficient to show a reason to modify Lu and, accordingly, declined to institute as to claims 5 and 15. Dec. 26–27. unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016) (The “Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because IBS relied on an entirely new rationale.”). Accordingly, we do not consider Petitioner’s Reply argument for claim element 1[e]. For the same reasons, we do not consider the argument Petitioner made for the first time at the oral argument (Tr. 22:17–23:2). Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768 (“A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.”); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (“In this case, the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”).” slip op. at 25

  Patent outcomesUS 7,385,994 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,385,994
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.

  RulingsFinal written decision

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11

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

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14

  Patent outcomesUS 7,165,927 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,165,927
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01374 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 2, 4–6, 9–11, 14–17, and 20 were not shown unpatentable under § 102(b) over Averbuj because its BIST controller did not generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Sechen believes a person of ordinary skill in the art would have additional experience, education, or a combination of the two, beyond that proposed by Dr. Bagherzadeh. Both experts have been employed as professors since the mid 1980s. Dr. Bagherzadeh also has some experience working with engineers in the industry by virtue of his employment with AT&T Bell Labs from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh was awarded a doctorate in computer engineering, while Dr. Sechen was awarded a doctorate in electrical engineering. Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-971. We, therefore, adopt our finding in IPR-971 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “arranged” or “prepared.” Reply 9–10. Responsive to this Board panel’s questioning during the oral hearing, however, Petitioner agreed that “designed to, adapted to, or arranged to” was an acceptable definition for the claim term “configured to.” See Tr. 22:7–17. Patent Owner contends the phrase “configured to generate” should be construed as “programmed to generate.” PO Resp. 9. Patent Owner does not propose a separate construction for the term “configured.” See generally id. at 9–17. In support of its proposed construction, Patent Owner relies on language in the ’501 patent and the testimony of its expert, Dr. Sechen. See id. Dr. Sechen testifies as to the meaning of “configured to generate,” but does not provide a separate discussion of the meaning of “configured to” outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57. As explained in our Final Decision in IPR-971, the term “configured to” is used in the ’501 patent in conjunction with numerous terms, such as “provide” and “selectively input,” and there is a presumption that the term “configured to” should carry the same meaning in each instance. See IPR- 971 FWD, 18–19. The evidence relied on by Patent Owner in support of its proposed construction of the term “configured to” in the present inter partes review does not differ materially from the evidence relied upon by Patent Owner in IPR-971. Compare PO Resp. 9–17 with IPR-971, Paper 19, 14– 19. Accordingly, we determine the broadest reasonable construction of “configured to” is “designed to, adapted to, or arranged to” for the reasons stated above and in our Final Written Decision in IPR-971. We adopt and incorporate by reference our analysis and construction of the term “configured to” in our Final Written Decision in IPR-971 (IPR-971 FWD, 18–22). slip op. at 18

  Patent outcomesUS 8,359,501 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,359,501
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision

  The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30

  Patent outcomesUS 8,001,434 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,001,434
• QSC Audio Products, LLC v. Crest Audio, Inc.No claims unpatentable
  PTAB · Apr 29, 2015 · IPR2014-00129 · APJ Glenn J Perry · IPR · Final written decision

  Claims 5 and 13 were not shown unpatentable under § 103 because the petitioner did not establish a reason to modify the prior art to calculate impedance or power from detected current and voltage.

  RulingsFinal written decision

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

    “meaning of the patent law. The touchstone of whether a particular document is a publication under the patent law is whether it was available to those of ordinary skill in the art to which it pertains.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments conflate two separate issues — (1) whether Gittleman is authentic, and (2) whether it constitutes a publication under the patent law. Gittleman includes the AES logo. The cover page further identifies a specific address for AES for the purpose of obtaining additional preprints, and states that reproduction of the article is prohibited without permission from the Audio Engineering Society Journal. Ex. 1009. There is no dispute that this document is a preprint of a paper intended for presentation at their respective AES conventions. Therefore, having considered and weighed the distinctive characteristics of the article and the circumstances surrounding its retrieval from the AES E-Library, we find that Gittleman is what it appears to be — a paper categorized by the Audio Engineering Society as a “preprint.” Petitioner has met its authentication burden under Fed. R. Evid. 901 and 902. Whether the self-authenticated “preprint” qualifies as a “publication” under the patent law is a separate matter.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had the following education and experience: Master of Science degree in Electrical Engineering and at least some practical experience with the design and testing of electronic amplifiers. Ex. 1003 ¶ 15. Patent Owner’s declarant agrees generally with the above assertion, asserting that a person of ordinary skill in the art would have had one year of experience with the design and testing of electronic amplifiers. Ex. 2001 ¶ 27. The disagreement appears to be that the Petitioner asserts that a person of ordinary skill would be aware of amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 1003 ¶ 16), while Patent Owner asserts that a person of ordinary skill would not have practical experience with amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 2001 ¶¶ 28–30). We credit Petitioner’s declarant, and agree that a person of ordinary skill would be at least aware of amplifier designs useful at radio frequencies (RF) based at least on that person’s educational background. Ex. 1003 ¶ 16. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1005, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and is currently designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’542 patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less qualified than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. As to his alleged bias, Patent Owner points to Dr. Ellis’s testimony that “DSP revolution” has occurred, where DSP solutions were preferred over analog solutions. PO Resp. 20–23. We do not agree with Patent Owner that this indicates that he is biased toward believing that “any DSP application that replaces an analog application is obvious.” See PO Resp. 23. As to his alleged use of the wrong standard for obviousness, Patent Owner argues that Dr. Ellis did not evaluate the prior art from the perspective of a person having ordinary skill in the art at the time of invention because apparently he did not use the words “at the time of invention” when discussing the standard in his declaration. PO Resp. 23–24. We are not persuaded by this argument. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 24. Patent Owner’s arguments are unpersuasive because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art.” slip op. at 15

  Patent outcomesUS 5,652,542 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,652,542

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.