• Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00253 · APJ Scott C Moore · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

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

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

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

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

  Patent outcomesUS 9,633,139 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,633,139
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

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

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

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

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

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

  Patent outcomesUS 10,574,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10

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

    “That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Shi does not disclose the claimed low-light high-pass parameter required by the asserted obviousness grounds.

  RulingsFinal written decision

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

    “Given the teachings of the specification, we agree with Patent Owner that a low-light high-pass parameter is a parameter of a smoothing function that favors high frequencies (high pass) when exposure times are long (low light). See Tr. 42:10–18 (Patent Owner’s counsel stating that “high-pass” means “there’s a bias or preference for high frequencies”); Ex. 2020, 93:23– 94:15 (Petitioner’s declarant, Dr. Katsaggelos, agreeing that a high-pass system attenuates the low frequency of a signal). Although we acknowledge Petitioner’s position that the specification provides other ways or considerations in implementing a smoothing function, based on our above analysis of the specification, we find that the specification describes the lowlight high-pass parameter as a specific component of a smoothing function. See, e.g., Ex. 1001, 21:17–25 (setting out several parameters besides the low-light high-pass parameter used in trajectory smoothing).” slip op. at 10

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

    “position and a real device position. Id. at 18:27–40. In other words, the blur is addressed by analyzing the image to identify motion and then shifting the image. Shi, however, does not disclose how its parameter is based on low light (or the long exposure times indicative of low light). In its Petition, Petitioner asserts that a person of ordinary skill in the art would understand that “blurs can be caused by low light conditions.” Pet. 28 (citing Ex. 1003 ¶ 111). Although this is true, that does not mean that Shi’s blurs are identified by a parameter that considers low light. As we just described, Shi identifies the blur by quantifying the amount of motion of the points in an image, not by identifying low light. This is simply a different way to determine the presence of motion blur. In Shi, blur is measured, whereas in the ’840 patent, it is inferred based on low-light conditions (e.g., by observing the exposure time). See, e.g., Ex. 1007, 18:7– 26; Ex. 1001, 19:12–26. In its Reply, Petitioner does not point to any further disclosures. Accordingly, we find that Shi does not disclose the “low-light” aspect of the claimed low-light high-pass parameter. This is sufficient to determine that Petitioner’s ground does not meet all claim limitations. Similarly, we find that Shi does not disclose the “high-pass” aspect of the parameter. Shi’s blur compensation uses a spherical interpolation to modify the image. Ex. 1007, 18:27–40. The low-light high-pass parameter, as we have construed the term, allows more high frequencies. To allow more high frequencies, this necessarily means either allowing fewer low frequencies, or allowing more high frequences as opposed to some counterfactual situation in which fewer high frequencies were going to be allowed. See Ex. 2020, 94:23–95:15; Ex. 2022. We are directed to no persuasive evidence from Petitioner that Shi’s spherical interpolation favors high frequencies over low frequencies. Accord Ex. 2018 ¶ 107 (Patent Owner’s expert stating that Shi’s spherical interpolation “reintroduce[es] both high- and low-frequency motion”). Even if Shi allows the viewing window to track the camera position “consistent with the natural blur in the image” (Ex. 1007, 17:63–67), we are not provided with sufficient evidence to conclude by a preponderance of the evidence that providing a similar visual goal as a high-pass parameter (Ex. 1001, 22:16–18, “the output motion may include high frequencies that mask motion blur”) is the same as having a high-pass parameter. Again, merely preserving high frequencies is not the same as having a “high-pass parameter” because, as construed, a “high-pass parameter” also involves some degree of attenuation of low frequencies or relative increase of high frequencies. Accordingly, we find that Shi does not disclose the “high-pass” aspect of the claimed low-light high-pass parameter.” slip op. at 18

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentable
  PTAB · May 14, 2025 · IPR2024-00189 · APJ William V Saindon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Fujiwara lacks the claimed horizontal position, and Bandy with Fowler lacks the claimed vertical position.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art . . . would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree). Ex. 1009, ¶34. Alternatively, . . . a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field. Id. Additional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Id. Pet. 9. Patent Owner applies the same definition. PO Resp. 17. We apply the parties’ proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’340 patent and the cited prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededGranted in part

    “c) Conclusion Having reviewed the claim language and the specification, we determine that the claimed planogram stores one piece of data with respect to identification—a unique identifier—and two pieces of data with respect to location—a vertical position and a horizontal position. Further, claim 1 states that each location (i.e., each horizontal/vertical position pair) is unique (“one-to-one”) for each unique identifier. Ex. 1001, 8:25–27. Thus, we determine that no horizontal/vertical position pair will be associated with more than one unique identifier (and vice versa). No other terms require construction at this time. See Realtime, 912 F.3d at 1375.” slip op. at 9

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

    “taught by “the horizontal position of the electronic shelf label along the horizontal shelf part 21, as shown in FIG. 4.” Pet. 21 (citing Ex. 1009 ¶ 75). Certainly, each shelf label in the real world, as well as in the drawing of Figure 4, has a horizontal position. However, that does not mean that Fujiwara’s database stores information indicating the horizontal position of the shelf label as required by the claim. The claim is not calling for the shelf label to have a location; it is calling for location information to be accessible by the server so that the server can determine the location of the mobile terminal. Ex. 1001, 8:19–24 (claiming a “method being performed by a central server configured to access a planogram associating . . . identifiers . . . with . . . locations . . . defined by a vertical and horizontal position”), 8:41–46 (claiming a method step of “determining a location of the mobile terminal . . . based on . . . the planogram). For example, fields in a database storing horizontal and vertical positions would be sufficient. Id. at 6:31–36 (“The central server 2 determines the location of said mobile terminal 1 from the identifier of said electronic label 3 using the data of a planogram associating a location with the label identifier.”), 7:16–18 (calling for the planogram to be stored in a database). To the extent we accept that Fujiwara teaches a unique identifier (shelf label ID) and a vertical position (e.g., shelf number 21-1), we find Fujiwara to be missing a horizontal position as required by the claim because neither the shelf number nor the shelf label ID provides an indication of where along the shelf the shelf label is located.” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1013–1021 and 1024–1027. PO Mot. Excl. 1. Our analysis above focuses on a dispositive issue regarding the claimed planogram. We are not apprised of any citations to these documents in the briefing regarding the planogram issue. Indeed, according to Patent Owner, Exhibits 1013–1021 involve one of the issues we did not address, regarding near-field communications. PO Mot. Excl. 3–4. Because this motion involves a question on evidence that is not relevant to the issues discussed in this Decision, we need not rule on the motion at this time. We dismiss Patent Owner’s motion to exclude as moot.” slip op. at 27

  Patent outcomesUS 10,674,340 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,674,340
• Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14

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

    “Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15

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

    “Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25

  Patent outcomesUS 8,898,494 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,898,494
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

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

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.No claims unpatentable
  PTAB · Jul 14, 2023 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–4 and 8–12 were not shown unpatentable because Petitioner did not prove the asserted anticipation or obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that [t]he level of ordinary skill encompassed a team of people, having a person with a Ph.D. or M.D. and five years of clinical and/or research experience treating diseases of the kidneys and circulatory systems and a person with at least a Bachelor’s degree in biomedical engineering or a related field and at least five years of experience designing catheter-based ablation systems. Pet. 40 (emphasis omitted) (citing Daft Pet. Decl. ¶¶ 64–68). Patent Owner responds that, “[f]or purposes of this proceeding, [Patent Owner] does not object to the definition of a person of ordinary skill in the art (‘POSITA’) proffered by Petitioner[] and adopted by the Board at institution as the result remains the same regardless of the definition—the Challenged Claims are valid.” PO Resp. 16; see also Dec. Inst. 15–17 (adopting, for purposes of institution, Petitioner’s proposed definition of the person of ordinary skill in the art). In addition, however, Patent Owner proposes a different level of ordinary skill in the art “should the Board believe that the difference in definition impacts the outcome” of this proceeding.8 PO Resp. 16. Both Petitioner and Patent Owner discuss how” slip op. at 9

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

    “to transmit ultrasound energy waves to target renal neural fibers” (claim 1, element 1d) and “configured to [perform certain functions] to the target neural fibers” (claims 3, 4, 8, and 9). See Pet. 23–25; PO Resp. 17–22; Pet. Reply 10; PO Sur-reply 1–2. Petitioner asserts that the phrase “configured to” should be construed as “able to.” Pet. 23; see Pet. 23–24 n.5 (discussing how “able to” has the same meaning as “capable of”). Patent Owner responds that “[t]he Board need not reach the construction of this term as Petitioner[’s] arguments fail under either construction, but to the extent a construction is required, ‘configured to’ should be construed as ‘designed to.’” PO Resp. 18. Based on the complete record, we do not discern a need to construe explicitly this phrase because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “the alleged motivation to use the device of Acker in Levin’s renal neuromodulation method. As noted by Patent Owner, after introducing Webster (by patent number), Levin states that “[s]imilar catheter based apparatus can be used to ablate the renal nerve with an intent to treat [Chronic Renal Failure].” Ex. 1004 ¶ 64 (emphasis added) (cited at PO Resp. 39 (discussing how “Levin explicitly qualif[ies] its statement by referring to ‘similar’ (not identical) catheters”)). But neither Petitioner nor its declarants have established that Acker’s ultrasound catheter is in fact “[s]imilar” to that in Webster in a manner that would support the view that one of ordinary skill in the art would have understood that Acker’s catheter could be used to “ablate the renal nerve with an intent to treat [Chronic Renal Failure]” as disclosed in paragraph 64 of Levin—i.e., to perform Levin’s renal neuromodulation method. See id. Dr. Mendelsohn states that Acker’s use of ultrasound-based ablation falls within the “any thermal means” disclosure in Webster (see Ex. 1052, 3:40–42), but Dr. Mendelsohn does not address why Acker’s ultrasound catheter is “[s]imilar” to the catheter in Webster (even after expressly noting the presence of that statement in Levin). See Mendelsohn Decl. ¶ 71 (“Moreover, Webster teaches transvascular nerve ablation using RF thermal ablation or ‘any thermal means’ and Levin teaches catheters similar to Webster’s can be used for renal denervation. Ultrasound ablation disclosed in Acker is a ‘thermal means’ of ablation.”).” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “(2) Objective Indicia of Nonobviousness We next turn to Patent Owner’s objective evidence of nonobviousness. Patent Owner alleges (1) unexpected results and skepticism, (2) copying, (3) praise, and (4) long-felt but unsolved need and failure of others. See PO Resp. 60–68; PO Sur-reply 25–27. Petitioner responds. See Pet. Reply 36–37. We have considered the evidence and argument presented by both parties, but do not address the issues in detail. See Alza Corp. v. Mylan Labs., Inc., 391 F.3d 1365, 1373 n.9 (Fed. Cir. 2004) (“Because [patent challenger] has not made a prima facie case of obviousness, we need not address the parties’ assertions regarding the district court’s discussion of secondary considerations.”).” slip op. at 31

  Patent outcomesUS 8,845,629 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,845,629

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.