• Caption Health, Inc v. University Of British ColumbiaInstitution denied
  PTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10

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

    “The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing 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

    “Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,129,591
• AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.All claims unpatentable
  PTAB · Oct 8, 2025 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Final written decision

  Claims 4–6 and 8 are unpatentable as obvious over Lee1 and Lee2; the Board found the Lee1–Lee2 combination teaches the limitations and has sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”), on or around the earliest possible priority date of the ’207 patent, would have had “a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems” and “familiarity with the wireless standards and well-known protocols for accessing wireless networks,” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 3, 10 (citing Ex. 1003 ¶ 36). In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Looking first at the claim language itself, Patent Owner’s construction is unduly narrow. The “for” recitations derive antecedent basis from limitation 4a. Ex. 1001, 36:44–45. Limitation 4a recites “a 4-step” procedure and “a 2-step” procedure. Thus, the claim includes one of each procedure type: “one” 4-step and “one” 2-step (i.e., single instances of each procedure). Patent Owner similarly reads the claim as requiring “one or more” of each procedure type. See Tr. 33:19–34:4. Because limitation 4a provides antecedent basis for a singular 4-step procedure and a singular 2-step procedure, this strongly suggests that the claim requires for the one (or for the single) 4-step procedure but not for all 4-step procedures, and for the one (or for the single) 2-step procedure but not for all 2-step procedures. At trial, Patent Owner’s interpretation was similar, stating, “that would read. . . as for the one or more 4-step . . . procedure and for the one or more 2-step . . . procedure.” See Tr. 33:25– 34:4 (emphasis added). In seeming contradiction, Patent Owner also stated, “I read that as being . . . all 4-step contention random access procedures . . . and all 2-step random access based procedures.” Id. (emphasis added). We note that Patent Owner does not, however, cite any legal precedent for interpreting “one or more” as requiring “all,” or provide reasoning for departing from the default claim construction principle that “one or more” includes “one.” For this reason and for reasons further discussed below, construing “for the 4-step” to mean “for all 4-step,” and “for the 2-step” to mean “for all 2-step,” would improperly import limitations from the Specification into the claims. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”).” slip op. at 11

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

    “explained below, we determine that Petitioner has shown by a preponderance of the evidence that claim 4 is rendered obvious over Lee1 and Lee2 (“Lee1–Lee2”).” slip op. at 20

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

    “With these teachings in mind, we are persuaded by Petitioner that incorporating Lee2’s higher power and different ramping into Lee1’s 2-step procedure would have even further reduced the latency of Lee1’s 2-step procedure, and that this would have resulted in different power settings based on procedure type. Pet. 37–38; Ex. 1003 ¶¶ 88–89; Reply 12–13. Patent Owner does not meaningfully dispute this point. See generally PO Resp. 37–42; Sur-reply 12–17. Instead, Patent Owner argues that Lee1’s 4-step procedure would “equally benefit” from reducing latency, and that Petitioner has not explained why a POSITA would not use the same power settings for both procedures, i.e., use Lee2’s same higher power and different ramping in Lee1’s 4-step procedure. See PO Resp. 41–42. However, Petitioner’s burden is to provide a motivation for the proposed combination—in this case, modifying Lee1’s 2-step procedure with Lee2’s higher power and lower ramping. The obviousness analysis does not require Petitioner to explain why the references would not have been combined in an alternative way not proposed by Petitioner. To the extent Patent Owner argues that Lee1 and Lee2 cannot be combined as proposed, and therefore must be combined in this alternative manner, we disagree. For example, Patent Owner does not provide evidence of teaching away or that the proposed combination is inoperable. See generally PO Resp. 37–42; Sur-reply 12–17. Furthermore, we do not see how solving any technical issues in combining Lee1 and Lee2 as proposed would have been beyond the level of ordinary skill in the art. See KSR, 550 U.S. at 418. Furthermore, Petitioner explains why a POSITA would have sought to” slip op. at 26

  Patent outcomesUS 10,932,207 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,932,207
• AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision

  The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18

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

    “We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19

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

    “(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26

  Patent outcomesUS 10,841,958 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,841,958
• Apple Inc. v. DH International Ltd.Instituted
  PTAB · Jun 25, 2025 · IPR2025-00172 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that claims 1, 10–12, and 19 are obvious over Suga and Gorsuch.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’294 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’294 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the alleged invention of the ’294 Patent (“POSITA”) would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, or in a similar discipline with at least two years of experience with wireless communication devices and networks. More education can substitute for practical experience and vice versa. Pet. 10 (citing Ex. 1004 ¶ 34). Patent Owner states that it “agrees with Petitioner on the level of ordinary skill in the art.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 26–29).” slip op. at 9

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

    “Both parties rely on the language of claim 1 and the ’294 patent specification to support their respective constructions, and they emphasize that a user’s selective triggering of the control device does not issue different activation commands or control which data conveyance operation is used. Claim 1 recites an “invariable activation command” as a command that is “issued when said control device is selectively triggered by the user.” selectively trigger a control device “via one of a button, a keypad, a tactile screen, and a biometric parameter detector,” e.g., by entering a PIN that is authenticated, in order for an invariable activation command to be issued. Id. at 8:43–50, 10:26–29, 19:3–5. The claimed function of an invariable activation command is to “initiate[]” either a “first data conveyance operation” or a “second data conveyance operation” depending on whether “said switching element is in said first state” or “in said second state.” As explained above, the state of the switching element depends on whether or not an “activation cue” has been received by a “cue receiver.” The ’294 patent specification confirms the operation. Id. at 10:26–36, 15:14–28. The parties joust over the proper terminology for characterizing an “invariable” activation command, but they appear to agree on how the claimed cell phone and method work. The ’294 patent specification makes clear that the activation command is “invariable” in the sense that whenever a user selectively triggers the control device on the cell phone, for example by pressing a button on a keypad, the same command is issued to initiate a data conveyance operation regardless of the “state” of the “switching element” (i.e., in a “first state” or “second state”). The user cannot select or issue different activation commands. The selection of which of the two possible data conveyance operations will be initiated by selectively triggering the control device depends not on the activation command—it is always the same—but on whether the switching element has received an activation cue (“first state”) or not (“second state”). The ’294 patent neatly summarizes that “[t]he same invariable activation command will thus be issued upon [the] control device being triggered, and it is the state of [the]” slip op. at 12

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

    “The ’294 patent claims and specification make clear that the switching element switches between a “first state” and a “second state” depending on whether or not an activation cue is received. Ex. 1001, 9:28–41, 14:53–59. The state of the switch, in turn, “allow[s] data to be conveyed according to alternate data conveyance operations.” Id. (emphasis added). Thus, the claim limitation is recited as a “data conveyance switching element,” not a “data switch,” because the switching element allows the device to switch between alternate operations for conveying data from the cellular phone to an external data exchange device. Id. Patent Owner’s proposed construction “conflicts with the express disclosure of the ’294 Patent.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (The “specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”) (citation omitted). On the present record, we determine that no further construction of claim terms is necessary to determine whether to institute a trial in this case. 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.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,022,294
• Precision Cancer Technologies Inc. v. Oncoustics Inc.Institution denied
  PTAB · Jun 3, 2025 · IPR2025-00242 · APJ David Cotta · IPR · Institution

  The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has not established a reasonable likelihood of prevailing on its assertion that any of the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’330 patent.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “area” in the challenged claims was added by amendment. Ex. 1004, 181.8 In making the amendment, Applicant stated that the language added by amendment was intended to distinguish the pending claims over Uniyal,9 which Applicant characterized as disclosing a “time series” of ultrasound data. Uniyal relies on a time series of ultrasound data. In order to distinguish Uniyal, the claims have been amended to recite a single static set of ultrasound RF data in a single frame of the tissue area. As explained in the Interview, the claims rely on a signle [sic, single] “snapshot” frame of the ultrasound RF data rather than a time series or [sic, of] RF data as disclosed in Uniyal. Applicant respectfully submits the amended claims are allowable over all of the cited reference. Id. at 186–187; see also id. at 185 (Applicant’s remarks accompanying amendment, stating: “As explained in the Interview, a static set of raw ultrasound RF signals is collected for an area. This is a snapshot of the tissue area as opposed to taking a time series of RF signals”), 191 (Examiner interview summary, stating: “Inventor noted that Uniyal uses a time series US [ultrasound] data whereas the invention uses images that are non-coherent in time (e.g., a static frame)”).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “transducer, Petitioner points to Hope-Simpson’s teaching that its neural network may be “capable of ‘analyzing patterns using a with a [sic] multi-dimensional (2-or more dimensional) data set, which may also be thought of as localized data sets.’” Id. at 22 (quoting Ex. 1005 ¶ 6; alteration by Petitioner). Petitioner then asserts that “[t]he localized data sets described by Hope-Simpson are equivalent to the claimed ‘single set of raw ultrasound [RF] data forming a single frame of a tissue area.” Pet. 22 (citing Ex. 1002 ¶ 86 (testimony of Dr. Papanicolau)). But Petitioner does not explain why Hope-Simpson’s “localized data sets” equate with a single frame of a tissue area rather than, for example, a time series of frames taken at the same location. Pet. 22. Petitioner cites the testimony of Dr. Papanicolau, but Dr. Papanicolau’s testimony lacks both technical reasoning and evidentiary support; it simply mirrors the statement in Petition. Ex. 1002 ¶ 86. For this reason, we give Dr. Papanicolau’s ipse dixit testimony little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24 ,2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, to the extent this is the data that Hope Simpson provides to the processor, on this record, Petitioner has not sufficiently established that it constitutes a “single static set” of raw RF ultrasound data “forming a single frame.”” slip op. at 15

  Claim constructioncites KSR · Graham
  Patents in suitUS 11,602,330
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.Some claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00094 · APJ Mary C Hoffman · IPR · Final written decision

  Claims 1 and 3–5 are unpatentable over Kobayashi and Hshieh; claims 2 and 6 were not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”), “at the filing date of the ’409 [p]atent[,] would have a master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶ 52). Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art. PO Resp. 9 (citing Ex. 2021 ¶ 55). We adopt Petitioner’s proffered level of ordinary skill in the art, which is supported by unopposed declaration testimony and consistent with the ’409 patent and prior art of record. See, e.g., Ex. 1001, 1:6–3:8 (describing the invention and related art in terms of integrated circuit design and fabrication). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 10

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

    “Based on the arguments and evidence, we disagree with Petitioner’s proposed construction requiring the corners to be rounded via a particular process, because doing so would improperly import a process of manufacture from the Specification into apparatus claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019) (explaining that, generally, a novel product that meets the criteria of patentability is not limited to the process by which it was made, however, process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention). Here, the portions of the Specification relied on by Petitioner (Ex. 1001, 2:10–20, 4:53–64) disclose a process for manufacturing but do not make clear that the process is an essential part of the claimed invention. We also disagree with Petitioner’s assessment of the prosecution history, i.e., that the claims were amended to distinguish the claimed rounded corners from Pfirsch’s rounded corners, which, presumably, are formed as an incidental result of lithography. On the contrary, the Examiner found (and Patent Owner acknowledged) that Pfirsch has rounded corners. Ex. 1002, 276, 295, 302. As Patent Owner correctly points out, the claims were amended during prosecution to include a “circular” contact to distinguish over Pfirsch’s square contact. See id. Petitioner does not otherwise point to evidence that Patent Owner clearly and unmistakably limited the claim scope to rounded corners formed by a particular process.” slip op. at 12

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

    “is ‘known’ is not sufficient for a motivation to combine.” PO Resp. 47. However, the motivation-to-combine analysis is a flexible one, and the “known-technique” rationale is adequate to show a motivation to combine. For example, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417; see also Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (“If there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.”). Here, as discussed above, the record shows that top view rounding was a known technique to eliminate corners, and that corners were a known problem (e.g., corners tend to reach undesirable higher peak electric field leading to premature breakdown voltage). See, e.g., Ex. 1003 ¶¶ 37, 39, 42– 44, 55–57, 122, 133, 135–141; Ex. 1005, 7:57–8:4; Ex. 1006, 1:18–21, 2:19–39, 5:3–17, Figs. 6A–8B; Ex. 1011, 1:29–41; Ex. 1012; PO Resp. 13, 46 (citing Ex. 1011, 1:34–40); Ex. 2021 ¶ 87. Furthermore, there is no dispute that modifying Kobayashi to eliminate corners via top view rounding was anything more than a “minor and commonplace modification” of cell shape within the skill of an ordinary artisan, or that top view rounding would change Kobayashi’s established function. Pet. 60; Ex. 2021 ¶ 86.” slip op. at 30

  • Obviousness (§103) › KSR rationalesMotivation foundUnpatentable

    “We agree that Kobayashi’ s Figure 5A solely cannot be relied upon as disclosing the claimed diameter. See Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue). However, we do not agree that Petitioner failed to show Kobayashi suggests the recited diameter. We disagree with Patent Owner’s assertion that Dr. Liu’s “vague, purported ‘design considerations’” are “unsupported.” PO Resp. 43. Although Kobayashi is silent on the width/diameter of the trench contact in Figure 5A, Kobayashi discloses trenched gates having dimensions below 0.5 μm, which demonstrates that it was known in the art, and required no more than an exercise of ordinary skill in the art, to create trenched features of widths well below 1 μm. Kobayashi also discloses that the width of each trench, and the distance between the adjacent trenches (which includes the trench contact), must be selected to optimum sizes . . . [and] these sizes . . . have some degrees of freedom.” Ex. 1005, 7:42–48. This demonstrates a POSITA would seek to optimize trench contact width or diameter. Dr. Liu’s testimony regarding design considerations suggests the desirability of a reduced diameter trench contact, e.g., to minimize the width of the trench contact for purposes of easier filling, to minimize the total width of the unit cell, and to minimize manufacturing time by reducing etch back time. See Ex. 1003 ¶¶ 111–114. As Patent Owner acknowledges, “there is always a motivation to speed up the fabrication process or shrink feature sizes of semiconductors.” PO Resp. 43 (citing 2021 ¶ 131). However, contrary to Patent Owner’s arguments, these are not generic motivations “untethered” from Kobayashi. Id. Indeed, Kobayashi directly addresses the fabrication process (including new techniques to obtain trench widths under 0.5 μm) and the need to optimize the size of trench gates and the space in between (which includes the trench contact). Ex. 1005, 7:43–54, 7:19–9:53. Patent Owner also argues that Petitioner presents no evidence that modifying Kobayashi to have a diameter smaller than 1 μm is predictable. PO Resp. 44. We disagree. As discussed above, Petitioner points to Kobayashi’s teachings that the sizes are to be optimized and that the trench gate width is smaller than 0.5 μm, which suggests making other trench features of that width was within ordinary skill. Ex. 1003 ¶ 112. Furthermore, Kobayashi’s silence as to the dimensions of the trench contact suggests that the trench contact diameter dimension is likely in the ballpark of the other explicitly disclosed trenched feature dimensions and is a matter of routine optimization. In addition, Patent Owner advances no persuasive evidence that the claimed diameter produces unexpected results or is otherwise critical. Patent Owner also argues that reducing trench contact diameter has downsides (i.e., reduced ease of filling for metal plugs and reduced current carrying capacity) not addressed by Petitioner; however, Petitioner is not required to address those tradeoffs in its Petition, and we do not see how those tradeoffs would prevent the proposed combination. PO Resp. 44; see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Here, Dr. Liu listed numerous benefits of having a reduced diameter, which weigh against the potential downsides raised by Patent Owner. Ex. 1003 ¶¶ 111–114. Moreover, we do not see how the downsides/tradeoffs prevent modifying Kobayashi in the manner suggested when the same tradeoffs appear to be applicable to the ’409 patent. Having considered Patent Owner’s arguments, and taking into” slip op. at 43

  Patent outcomesUS 7,812,409 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,812,409
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7

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

    “Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8

  • BurdenNot shown unpatentable

    “On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11

  Patent outcomesUS 7,629,634 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,629,634
• Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdInstituted
  PTAB · Jan 28, 2025 · IPR2024-01048 · APJ Mary C Hoffman · IPR · Institution

  The Board instituted IPR on all challenged claims and all four grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We begin our analysis with independent claim 1. Considering these factors, we preliminarily determine that Petitioner has shown a reasonable likelihood that claim 1 is unpatentable as obvious over Zhang, Fillebrown, and Pasanen, for the reasons explained below.” slip op. at 16

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

    “Petitioner argues that limitation 1c is taught by the combination of Zhang with Fillebrown. Pet. 18. Petitioner identifies Zhang’s teaching of transmitting commands and media content from the mobile device to helper servers via a wireless network, WLAN. Pet. 16–18 (citing Ex. 1004, 3:25– 60, 4:1–8, 4:32–50, 7:1–14, 8:13–22; Ex. 1003 ¶¶ 103, 104, 114–118). Acknowledging that Zhang does not expressly teach an intermediate routing device, Petitioner identifies Fillebrown’s intermediate wireless router (wireless router 120) for providing network range extension by amplifying routed signals. Id. at 19–22 (citing Ex. 1005 ¶¶ 16, 34, 49, 51, 57, 61). Petitioner contends a POSITA would have been motivated to modify Zhang to route data via an intermediate wireless router pursuant to Fillebrown to provide network range extension, and that such a modification would have had a reasonable expectation of success because Zhang and Fillebrown teach the same network setup (i.e., WLAN using a wireless protocol/standard such as IEEE 802.11 or Home RF). Pet. 22–23 (citing Ex. 1003 ¶¶ 109–111)” slip op. at 20

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

    “The parties do not propose any express claim construction. Pet. 4; see generally Prelim Resp. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

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

    “We preliminarily disagree with Patent Owner. Although the claim lists step 1b before step 1d, method steps are not ordinarily construed to require a specific order of performance unless the claims or Specification directly or implicitly require that specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Nothing in the express claim language precludes performing step 1d before step 1b, as in Zhang. For example, the claim does not contain temporal terms, like “then” or “next,” nor does the claim otherwise specify that step 1b must precede step 1d. Although Patent Owner points out that a term of step 1d (i.e., the one more available devices) derives antecedent basis from text in step 1b (i.e., one more available devices), this alone does not directly or implicitly require performing step 1b before step 1d. Prelim Resp. 6–7 (citing Ex. 1002, 240, ’648 patent prosecution history). Nor does the Specification require performing the step of identifying devices as available before the step of wirelessly signaling those devices or even that the steps be mutually exclusive. For example, there are no statements that this step order is important, nor disclaimer of any other order, nor any prosecution history indicating a surrender of any other order. Moreover, according to the Specification, announcer 30, which is the component that identifies devices as available prior to the wirelessly signaling, is only “preferably provided.” Ex. 1001, 7:28–31. Even assuming Patent Owner were correct that step 1b must precede step 1d, Patent Owner’s position that device(s) must be identified as available does not appear to be commensurate with the claims. According to its plain meaning, limitation 1b does not appear to require identifying devices as available; the claim merely requires identifying “available devices.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). In other words, the claim does not appear to require identifying (i.e., determining) whether devices are available but merely requires identifying devices that happen to be available. According to our preliminary understanding, Zhang’s mobile device 1) discovers (identifies) connected available and unavailable helper servers, and then 2) sends (wirelessly signals) service requests to compatible available and unavailable helper servers. Ex. 1004, 3:44–4:8, 6:51–7:13. Thus, Zhang identifies and then wirelessly signals available devices (Zhang also identifies and then wirelessly signals unavailable devices). As such, we preliminary determine that Zhang meets the claim language “identifying one or more available devices” and “wirelessly signaling the one or more available devices.”” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,547,648
• Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdInstitution denied
  PTAB · Jan 28, 2025 · IPR2024-01047 · APJ Stacey G White · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Patent Owner’s definition of a person of ordinary skill in the art is similar to Petitioner’s definition with some variation in the amount of education and specificity as to the experience required. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. We note, however, that our determination in this proceeding would be the same under either formulation.” slip op. at 9

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

    “Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a [person of ordinary skill in the art]” and does not propose construction of any claim term. Pet. 4. Patent Owner also does not propose construction of any claim term. See generally, Prelim. Resp. Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 10

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

    “feature of scanning a wireless communication network by the mobile device receiving the streaming data for re-routing, to identify devices connected to the wireless network, are identified as capable to handle the routed media content.” Prelim. Resp. 5–6 (emphasis added) (citing Ex. 1002, 237–238). Thus, we understand the recited language to require scanning to find devices that have been identified as compatible, not just scanning to find devices and later determining which of those devices, if any, are compatible. Zhang, on the other hand, scans to find devices in the network, but that scan does not seek out devices identified as compatible. Specifically, Zhang scans to find its “helper environment” which is composed of “devices around them.” Ex. 1004, code (57); see also id. 2:16–20. The first step of Zhang’s process is to find “a local device [that] offers helper service.” Id. at 3:62–63. In the next step, Zhang then interrogates the device it scanned for in order to find out whether that device offers the necessary service. Id. at 3:63–4:5. In other words, Zhang is not scanning for compatible devices, but rather it is scanning for any device around it and then asking whether the device provides the necessary service. We find this to be insufficient because the claim is not merely seeking to identify a compatible device, but rather it is scanning “to identify a plurality of devices, identified as compatible to handle said media content.” Thus, for these claims it is not enough that the network be scanned for devices; instead, the network must be scanned for devices “identified as compatible.” The inclusion of Rofheart does not address this issue. Rofheart is relied upon to teach “that a local device identifies and connects with a plurality of remote devices.” Pet. 29. According to Petitioner, one of ordinary skill in the art would have used Rofheart’s teaching to improve Zhang by adding “the benefit of providing users control to select one or more of a plurality of devices, rather than always connecting to the first identified available compatible device, as taught by Zhang.” Id. As such, neither of the cited references addresses the recited scanning for devices identified as compatible.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,699,223
• Apple Inc. v. S.M.R. Innovations Ltd And Y.M.R. Tech LtdInstitution denied
  PTAB · Jan 27, 2025 · IPR2024-01050 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–3, 9, and 24 would have been obvious over the asserted references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Considering the above principles, we determine that Petitioner has not shown a reasonable likelihood that any of the challenged claims would have been obvious over Chihara, BluetoothSpec, Everett, and Chang, for the reasons explained below.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent owner contends that a person of ordinary skill “would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or a related field in computing technology, and at least two years’ experience in wireless communication and mobile devices including multimedia streaming, or equivalent education, research, experience, and knowledge.” Prelim. Resp. 2–3. In other words, Patent Owner argues that the person of ordinary skill would have had less education and more specific experience with mobile devices, including multimedia streaming, than Petitioner proposes. Because Petitioner’s argument is supported by declaratory testimony, and Patent Owner does not provide supporting evidence for its argument, we adopt Petitioner’s articulation of the level of ordinary skill in the art. See Ex. 1003, ¶ 29 (citing Ex. 1001, 1:16–20, 4:18–55, 11:61–12:11).” slip op. at 9

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

    “Although Petitioner doesn’t promote it in its Petition, we agree with Petitioner’s undisputed contention that the ordinary and customary meaning of the “announcer device” limitation is that the “mobile communication device is receiving rerouted data from surrounding equipment, rather than rerouting data to surrounding equipment.” Pet. 19. This is in accord with the specification of the ’990 patent which states that “[t]he announcer device 30 is responsible for announcing to the environment the availability of a current device for accepting routed media.” Ex. 1001, 7:15–17 (emphasis added). The construction that Petitioner does promote, based on its interpretation of Patent Owner’s arguments in the parallel litigation, departs from the term’s ordinary meaning, yet Petitioner has presented no evidence to justify such a 7 Petitioner also argues that we should construe the term media transformer as a means-plus-function limitation invoking 35 U.S.C. § 112(f). Pet. 7–11. We need not construe this term to reach our decision not to institute trial in this proceeding. 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))). departure. For example, Petitioner has not shown that the patent applicant has plainly acted as lexicographer for the term, or has plainly disavowed the full scope of the term. See Thorner v. Sony, 669 F.3d at 1365; Multiform Desiccants v. Medzam, 133 F.3d at 1477. We are aware of no evidentiary basis for Petitioner’s proposed construction in the specification or prosecution history of the ’990 patent. To the extent, if any, that Patent Owner may have argued in the parallel district court proceeding for a departure from the term’s ordinary meaning, we find no clear disavowal of the term’s scope, particularly in light of Patent Owner’s ultimate argument that the term should have its “[p]lain meaning.” Ex. 2008, 2.” slip op. at 12

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

    “In light of our disagreement with Petitioner’s proposed claim- construction, we do not find persuasive Petitioner’s argument that Chihara teaches the “announcer limitation,” either alone or in light of BluetoothSpec. Although Petitioner shows that Chihara’s phone 11B announces its availability for pairing with nearby Bluetooth-compatible devices, Petitioner does not argue that phone 11B indicates availability to receive any rerouted data from either headset 13 or watch 12B. To the extent that phone 11B receives data for rerouting, it appears to receive it from a mobile or fixed communication network, not from any surrounding Bluetooth devices. See, e.g., Ex. 1004 ¶¶ 79 (phone 11B receives video and audio data via “a fixed telephone network or another mobile telephone set accommodated in a mobile communication network,” and transmits that streaming data to watch 12B and headset 13), 53–54 (calls arrive via mobile telephone antenna 26, which are then processed and transmitted via Bluetooth antenna 21 to watch 12). Regarding the bidirectional communication between phone 11B and headset 13 or watch 12B, Petitioner has not pointed to any evidence that the data sent from watch 12B or headset 13 to phone 11B includes rerouted data. Similarly, Petitioner’s contention that Chihara’s phone 11B, in light of BluetoothSpec, indicates its availability (e.g., that the phone is “powered on” and transmits signals to discover nearby devices) fails to meet the plain language of claim 1, which requires the streaming device (phone 11B) to indicate its availability to receive rerouted data from the surrounding devices (headset 13 or watch 12B). Thus, we determine that Petitioner has failed to show that Chihara, in view of BluetoothSpec and the other references, teaches the “announcer device” limitation. Therefore, Petitioner has not shown that it would be likely to prevail if we instituted an inter partes review.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,969,990

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.