• Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Nov 12, 2025 · IPR2024-00782 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–6, 8–15, and 17–20 are unpatentable under § 103 over the stated prior-art grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17

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

    “We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39

  • Skill levelOther

    “B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.10 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 24

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

    “We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Buer teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Buer.” slip op. at 39

  Patent outcomesUS 8,646,042 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,646,042
• Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Nov 12, 2025 · IPR2025-00075 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over the asserted combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18

  • Prior constructionPrior construction adoptedDecided for patent owner

    “invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 10. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from the other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9

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

    “would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158).” slip op. at 40

  • Skill levelOther

    “Principles of Law B. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.9 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 25

  Patent outcomesUS 9,679,289 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,679,289
• Google LLC / Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Nov 12, 2025 · IPR2024-00783 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over the listed combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18

  • Prior constructionPrior construction not adoptedDecided for petitioner

    “construction for “enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabling,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabling.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabling” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that “nowhere does Dua teach or describe . . . providing an access key in exchange for information held locally in the PDK’s service blocks.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39

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

    “We find Patent Owner’s arguments unavailing, as they rely on Patent Owner’s arguments that “the specification defines ‘local, secured information’ as information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” (PO Resp. 30), with which, as discussed above, we do not agree. Dua discloses an “RFID Tag-Reader Module” which includes “Tag Memory 322” that may be tamper resistant. See Ex. 1004 ¶¶ 105, 109. Thus, we find persuasive Petitioner’s reliance on Dua’s Tag Memory 322, which locally stores information in a tamper-resistant manner, for teaching an integrated, secure memory for storing information locally, wherein the information is secured. Id. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Dua and Giobbi ’157 teaches “an integrated, secure memory storing local, secured information,” as recited in claim 1.” slip op. at 34

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

    “would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158). Patent Owner does not address Petitioner’s positions on combining the teachings of Dua and Giobbi ’157 and thus Petitioner’s positions stand unopposed as a part of this trial. We have reviewed Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Dua and Giobbi ’157 as proffered in the Petition.” slip op. at 40

  Patent outcomesUS 9,679,289 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,679,289
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentable
  PTAB · Nov 6, 2025 · IPR2024-00867 · APJ Kevin C Trock · IPR · Final written decision

  Claims 11, 12, 16, 17, 19, 20, and 84 are unpatentable as obvious over Nozaki and Haitani, alone or combined with Graham or Kim.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ descriptions of the level of skill in the art are very similar, with only a slight difference in the number of years of work experience suggested. Petitioner states that “[a]lthough the experts propose slightly different POSITA definitions, the differences are immaterial to the analysis here.” Pet. Reply. 1. Patent Owner does not believe the two definitions are materially different, and states that “the arguments herein do not change under either definition. PO Resp. 8. Petitioner’s description of a person of ordinary skill appears to be consistent with the technical complexity of the subject matter described in the ’848 patent. This understanding is supported by the testimony of Petitioner’s declarant, Dr. Bederson, who states that he is “well acquainted systems and methods described in the ’848 patent.” Ex. 1005 ¶ 36. Accordingly, we continue to use Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. B. Claim Construction” slip op. at 12

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

    “the meaning of the claim term “mode” as it is used in the ’848 patent and as one of ordinary skill in the art would understand it at the time of the invention. First, the parties do not necessarily disagree as to the meaning of the term “mode.” Patent Owner asserts that a person of ordinary skill in the art “would understand ‘mode’ to mean “an operational state that a system has been switched to.” PO Resp. 13. Petitioner “do[es] not necessarily object to the concept of a ‘mode’ as an operational state,” but does object to how Patent Owner applies the term. Pet. Reply 1. Petitioner objects to Patent Owner’s “application of its construction,” which, Petitioner argues, “is far narrower than the words alone suggest.” Id. Second, the intrinsic evidence, including the claims and the ’848 specification, makes it readily apparent what the ordinary and customary meaning of the term “mode” would be to one of ordinary skill in the art at the time of the invention. Based upon our consideration of the claims and the ’848 specification, we find that the term “mode,” as it is used by the ’848 patent, means a “state,” “condition,” or “operational state” of a recording device, such as a video camera, that is selected by a user and may include a selection function using threshold values.” slip op. at 19

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We disagree with Patent Owner. In determining obviousness, the scope of relevant prior art “necessarily encompasses not only the field of the inventor's endeavor but also any analogous art.” In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). A reference qualifies as prior art for a determination under § 103(a) when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A reference is analogous to the claimed invention when it is from the same field of endeavor, regardless of the problem addressed. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Similarity in the structure and function of the invention and the prior art is indicative that the prior art is within the inventor's field of endeavor.” slip op. at 37

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

    “Here, Petitioner provides a persuasive rationale as to why a person of ordinary skill in the art would combine the teachings of Nozaki, Haitani, and Graham as described in the Petition. For example, Petitioner explains that a person of ordinary skill in the art would have recognized that Nozaki’s facedetection data could be used as an additional method by which to identify Figure 5 of Nozaki could be configured as a scrollable list of keyframe data similar to Graham. Pet. 37–38 (citing Ex. 1005 ¶ 141). Petitioner also explains that a person of ordinary skill in the art would have been motivated to implement this modification to improve the efficiency of searching for specific moments within a long video file. Pet. 38 (citing Ex. 1005 ¶ 142). Petitioner also explains that Graham’s video segmenting methods address this need and could have been easily implemented in the Nozaki device. Pet. 38 (citing Ex. 1005 ¶ 142). Dr. Bederson testifies that such implementation would have been within the skill of a person of ordinary skill in the art. Ex. 1005 ¶ 142. Accordingly, based upon the complete record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill in the art at the time of the claimed invention would have had a reasoned basis to combine the teachings of Nozaki, Haitani, and Graham in the manner described and would have had a reasonable expectation of success in that endeavor.” slip op. at 64

  Patent outcomesUS 10,176,848 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,176,848
• PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.All claims unpatentable
  PTAB · Nov 5, 2025 · IPR2024-00133 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Sturman and Ho; the Board found the Ho/Jiau/Choi grounds, with and without Ellis, insufficient.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal as it better reflects the ’089 patent. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 10

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

    “Consistent with Phillips, we begin with the “ordinary and customary meaning” of the words of the claims. Phillips, 415. F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties agree that the ordinary and customary meaning of the phrase “background object” is consistent with the dictionary definition and means an object that is “not in the foreground.” Tr. 8:10–16; PO Resp. 8–9; Ex. 2008 (AMERICAN HERITAGE DICTIONARY 2006); see also Ex. 2009 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM- WEBSTER DICTIONARY 2007); Ex. 2010 (“the part of a picture or pattern that is behind the main people or things in it” (MACMILLIAN ENGLISH DICTIONARY 2007); Ex. 2011 (“the ground or parts, as of a scene, situated in the rear (opposed to foreground)”) (RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 2005). Having determined the ordinary and customary meaning, we need only look to see if there is some reason—such as the applicant acting as a lexicographer or the ordinary and customary meaning being improperly subjective—why the ordinary and customary meaning is not controlling.” slip op. at 15

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

    “We do not find that the prosecution history demonstrates that the applicant acted as a lexicographer by “clearly set forth a definition of the disputed claim term,” or “clearly express[ing] an intent to define the term” as required by Thorner, 669 F.3d at 1365. Instead, the language in the prosecution history is consistent with the ordinary and customary meaning. That is, the applicant focuses on the location of the object relative to the area of game play, i.e., the foreground. For example, the applicant distinguishes Chu’s object as not being “background objects” because they “are featured in the forefront of [the] game play as primary objects to be manipulated or used during game play (see Chu at ¶¶ [0063]–[0065]).” Ex. 1002, 85 (emphasis added).12 The applicant continued by arguing that Chu’s objects “exist in the background, outside of the primary focus of game play and as unexpectedly interactive components, and are not themselves needed or required in order to play the game.” Id. If anything, this demonstrates an intent of the applicant to use the customary and ordinary meaning—not in the foreground—and not act as a lexicographer.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s argument. Under our rules, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). We have reviewed Dr. Zagal’s testimony on this subject (see Ex. 1003 ¶¶ 156–160, 163, 166, 172, 177–178) and find that it complies with our requirements. Specifically, Dr. Zagal provides his opinion and identifies specific evidence in the record that supports it. We do not find MarkForged, a nonprecedential decision, persuasive. Although MarkForged cites 37 C.F.R. § 42.65(a) as support for the proposition that expert testimony “is entitled to little to no weight [if] it merely parrots the Petition,” the rule is silent on that point. Patent Owner has not directed us to any rule or precedential decision that says that non- 17 The decision was affirmed by the Director. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Aug. 24, 2022). conclusory testimony which cites underlying factual support, such as Dr. Zagal gives in this proceeding, is entitled to no weight.” slip op. at 49

  Patent outcomesUS 8,688,089 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,688,089
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdNo claims unpatentable
  PTAB · Oct 31, 2025 · IPR2024-00777 · APJ Jameson Lee · IPR · Final written decision

  Claims 16–27 were not shown unpatentable because Petitioner failed to account for limitations 16[b] and 16[i] and their counterparts across the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes that a person of ordinary skill in the art “would have a Bachelor of Science degree in Electrical Engineering, Computer Engineering, Computer Science, Human Computer Interaction, or a related technical field, with at least one year of experience working in the field of user interfaces and/or content management.” PO Resp. 11 (citing Ex. 2040 ¶ 53). The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 10. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s (EX2040. ¶53) does not change the arguments set forth herein.” PO Resp. 11. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.4 4 All of our findings and conclusions would still be the same, however, had we applied Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In its Reply, Petitioner does not assert that the district court’s construction is incorrect. We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

  • BurdenNot shown unpatentable

    “PO Resp. 30–31 (Figure 26 omitted). In its Reply, Petitioner still does not provide an articulated reason for placing user profile selection buttons, labeled with user names, within Horn’s panes 2601 or 2602. Reply 12–14. Although Horn does describe personalized profile, Petitioner points to no disclosure of Horn as to how a user would have selected his or her own profile from among a plurality of user profiles. Petitioner presents no reason for placing these user profile selection buttons, labeled with user names, gleaned from or suggested by Baumgartner, within either pane 2601 or pane 2602 in Horn’s workspace view. Further, pane 2602 contains “a list of all collections defined by MFS and the user,” and pane 2601 lists the source examined by the user to create his or her collections. Ex. 1005, 19:41–46. That disclosure suggests the contents of panes 2601 and 2602 are tied to one particular user. No rational basis is articulated by Petitioner to place user profile selection buttons within these panes which appear to be in the profile space of one user. For the foregoing reasons, Petitioner has not adequately accounted for limitation 16[b].” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “The test for sufficiency of a written description under 35 U.S.C. § 112 is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. The Court of Appeals for the Federal Circuit has explained: One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. (“[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”) (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims. . . .”), the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997).” slip op. at 31

  Patent outcomesUS 11,017,815 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdSome claims unpatentable
  PTAB · Oct 30, 2025 · IPR2024-00735 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–6 and 9–13 are unpatentable as obvious; claims 7, 8, 14, and 15 were not shown unpatentable because WinTV was not established as a prior-art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8–9. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent Owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s does not change the arguments set forth herein.” PO Resp. 5. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.10 C.” slip op. at 8

  • 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 district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user, are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “2. “the first group of video information being configured to allow a user to edit” Petitioner asserts: “This limitation should be construed for the purposes of this proceeding as meaning at least that a user can modify which video information is a part of the first group of video information.” Pet. 21. Patent Owner neither proposed its own construction nor disagreed with Petitioner’s proposed construction. We adopt the meaning as proposed by Petitioner. D.” slip op. at 14

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

    “We do not reach a resolution on the issue of relative cost between a wired LAN versus a wireless LAN, because Petitioner’s assertion that wireless LANs “were often cheaper and easier to install” is nebulous by use of the imprecise word “often.” “Often” cheaper permits “often” not cheaper. Much depends on how many access points would exist in the wired LAN. Petitioner does not discuss that consideration in the context of Horn. Also, we are persuaded by Petitioner’s other stated reasons for implementing Horn’s LAN as a wireless LAN: (1) that a wireless LAN can be more convenient to users, and (2) Baumgartner provides adequate motivation by disclosing transmission of video from server 36 via communications network 34 such as the Internet over link 48 implemented wirelessly to user computer equipment 22 such as a personal computer. Pet. 29–32. We are persuaded that a wireless LAN provides more user convenience by enabling the user equipment accessing the external network to be flexibly located within the range of the LAN without need to have wires installed to run to those locations. That is true whether there is only one user equipment or there are multiple user equipment, one per user. In the case of only one user equipment, the user can access the external network from a wide range of locations and change that location flexibly. In the case of multiple user equipment, one per user, each user can access the external network from his or her own preferred location, and also change that preference at any time without regard to whether wires have been installed to the preferred location.” slip op. at 22

  Patent outcomesUS 11,017,815 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentable
  PTAB · Oct 30, 2025 · IPR2024-00828 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1, 2, 4–7, and 9–14 are unpatentable as obvious over the Rogers-based combinations with Rosenberg, Rekimoto, and, for claims 9–14, Miyazawa.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “13 The Court was very critical of Dr. Wobbrock’s testimony in the related district court case. See generally Ex. 1026 (September 18, 2025 Order). With regard to the ’086 patent, the Court found that Dr. Wobbrock’s testimony was not based on any record evidence (id. at 7, 9), arbitrary (id.), contrary to the evidence (id. at 7–8), unjustified (id. at 8), ipse dixit (id. at 9), conclusory (three times) (id.), insufficient to support a jury verdict (three times) (id. at 9, 27), untethered from the Specification (three times) (id. at 28, 30, 31), inconsistent (id. at 29), insufficient to support his opinion (id. at 29–30), unsupported (id. at 30), and not to be credited by a reasonable jury (id. at 31). We have considered this criticism of Dr. Wobbrock’s testimony in view of the September 16, 2025, Memorandum to the Members of the Patent Trial and Appeal Board on the subject of “PTAB consideration of prior findings of fact and conclusions of law” (available at: https://www.uspto.gov/sites/default/files/documents/Memo_re_prior_finding s_of_fact_and_conclusions_of_law_9_16_25.pdf?utm_campaign=subscripti oncenter&utm_content=&utm_medium=email&utm_name=&utm_source=g ovdelivery&utm_term=) and in light of the case law (see, e.g., N.L.R.B. v. Pittsburgh S.S. Co., 337 U.S. 656, 659 (1949) (“[I]n the determination of litigated facts, the testimony of one who has been found unreliable as to one issue may properly be accorded little weight as to the next.”). We have similarly found Dr. Wobbrock’s testimony to be contrary to the plain and ordinary meaning of the claims, untethered from the Specification, unsupported by the evidence, inconsistent, arbitrary, and conclusory. We accord the testimony of Dr. Wobbrock little or no weight. We view the testimony of Petitioner’s expert, Dr. Nielson, as more credible and persuasive as it tracks more closely with the ’086 patent and the cited art. EcoFactor, Inc. v. Google LLC, 137 F.4th 1333, 1339 (Fed. Cir. 2025) (quoting Daubert v. Merrell Dow Parms., Inc., 509 U.S. 579, 597, 589 (1993) (“The Supreme Court has explained ‘that the trial judge plays a “gatekeeping role,’” ‘through which it must “ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.’”)).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “with touch interfaces.” PO Resp. 8 (citing Ex. 2005 ¶¶ 76–77). Although there are minor differences in these definitions of the level of ordinary skill in the art, the parties agree that this issue is not disputed. Tr. 11:24–26 (Petitioner’s counsel); 43:16–22 (Patent Owner’s counsel indicating agreement with Petitioner’s definition); see also Pet. Reply 1 (“The experts agree on the definition of ordinary skill in the art (‘POSITA’).” Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner as it is not disputed and is consistent with the ’086 patent and the asserted prior art.” slip op. at 11

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

    “We find no support in the language of claim 1 for construing the “first registering mode” and the “second registering mode” as “operating modes,” or as “different operational states,” or “sub-operating modes of the ‘said registering mode’” as contended by Patent Owner. There is no express statement in claim 1 that the “first registering mode” and the “second registering mode” are “operating modes,” or are “different operational states,” or are “sub-operating modes of the ‘said registering mode.’” The language of claim 1 is clear that the only two “operating modes” explicitly recited in claim 1 are the “identification mode” and the “registration mode.” Claim 1 recites that these two “modes” are “operating modes,” but does not recite that the “first registering mode” and the “second registering mode” are “operating modes.” The language of claim 1 cannot be read to include the requirements that the “first registering mode” and the “second registering mode” are “operating modes,” or are “different operational states,” or are “sub-operating modes of the ‘said registering mode.’” Rather, we agree with Petitioner that the language of limitation 1c that specifically refers to the “registering mode” as an “operating mode” and the language of limitation 1f that refers to the “first registering mode” and the “second registering mode” as “mode[s] for inputting input information” that are “provided in said registering mode” contradicts Patent Owner’s proposed construction that would require the “first” and “second registering mode[s]” to be “different operational states.” The plain and ordinary meaning of the language of claim 1 provides that the “first registering mode” and the “second registering mode” are “mode[s] for inputting input information” that are “provided in said registering mode” which is one of the two delineated “operating modes.” Both “first” and “second” “registering mode[s]” ”for inputting input information” are recited as “provided in said registering mode,” a single “operating mode.”17” slip op. at 17

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

    “Both references are directed to allowing users to input information via touchsurface technology and are analogous art to the ’086 patent. . . . [A] POSITA would have found Rogers and Rosenberg to be compatible because of the technical similarity of their teachings, and a POSITA would have further recognized that Rosenberg’s finger orientation disclosures, applied to Rogers’ graphical passcode disclosures, would facilitate a “natural and intuitive” means of implementing the teachings of Rogers. A POSITA therefore would have been motivated to look to Rosenberg to improve Rogers, and vice-versa. . . . A POSITA . . . would have considered the disclosures in Rosenberg and been motivated to modify Rogers’ “large fingertip and a small stylus tip” example so that it instead used the “natural and intuitive” finger pad versus finger end distinction discussed in Rosenberg. A POSITA would have found this modification to be a simple substitution of elements well known in the art and would have had a reasonable expectation of success in achieving the benefits disclosed in Rosenberg by making the modification, which involved only routine skill. . . . [A]dding finger end and finger pad touch detection to Rogers would involve no more than applying a known technique (i.e., finger end and finger pad touch detection/distinction as taught by Rosenberg) to a known device ready for improvement (Rogers’ apparatus having “large fingertip and a small stylus tip” capabilities) to yield predictable results (simple to use touch screen interface with multipoint targeting and multi-finger gesturing). . . . It also would have been obvious to combine Rogers with Rosenberg because both references disclose touch screen interfaces that detect a contact area of a finger. . . . A POSITA would have considered Rosenberg’s disclosures and been motivated to modify the “graphical passcode” features of Rogers so that the disclosed device is capable of detecting information input by a pad or end of a finger, because it would provide a “generally easily distinguishable” basis upon which to program the device disclosed in Rogers to detect a “measurable parameter” based on “contact area.” A POSITA would have further recognized that these features of Rogers and Rosenberg could be successfully combined because both references teach a “calibration” mode in which the user trains the device to recognize a specific range of input parameters that allows for some variation in input while remaining within acceptable tolerances. . . . A POSITA would have had a reasonable expectation of success in modifying Rogers in this manner for at least the same reasons.” slip op. at 60

  Patent outcomesUS 8,982,086 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,982,086
• Microsoft Corporation v. Proxense, LLCAll claims unpatentable
  PTAB · Oct 17, 2025 · IPR2024-00846 · APJ David C Mckone · IPR · Final written decision

  Claims 1–29 are unpatentable: claims 1, 2, 4, 5, 7–13, 15, 16, 18–24, and 26–29 as obvious over Burger; claims 3, 14, and 17 over Burger and Robinson; claims 6 and 25 over Burger and …

  RulingsFinal written decision

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

    “For the same reasons, and based on the same evidence, given in the ’233 FWD, we maintain our construction of “a third party that operates a trusted authority,” namely, “a trusted authority that is an entity separate from the parties to a transaction,” and make clear that such a transaction is not limited to those in which the principal parties are the user being allowed access and the application being accessed. Based on the complete record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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 foundReasonable expectation foundUnpatentable

    “Petitioner contends that “it would have been obvious to a [person of ordinary skill in the art] to incorporate the age verification method of Robinson in Burger so that Burger’s system can be used by businesses interested in conducting transactions that require age-verification.” Pet. 93. Petitioner argues that it would have been predictable to include Robinson’s age-verification feature in Burger’s system in light of Robinson’s explanation that merchants and their employees face penalties if they sell age-restricted goods (e.g., alcohol or tobacco) to underage individuals. Id. at 94–95 (citing Ex. 1006 ¶ 5; Ex. 1003 ¶¶ 79–80). Dr. Traynor testifies that there would have been “a reasonable expectation of success because it merely involves combining known elements in a manner that would have been easily implemented and obvious to” a skilled artisan. Ex. 1003 ¶ 80. We credit Dr. Traynor’s uncontroverted testimony and find that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Burger and Robinson. As to claims 3, 14, and 17, Robinson describes a user registering a biometric sample, identity-verifying information (SID), and age-verifying information with a database of an age-verification system. Pet. 95–96 (citing Ex. 1006 ¶¶ 14–15, 28, 43, 48; Ex. 1003 ¶¶ 175–178). We find that a skilled artisan would have combined the teachings of Burger and Robinson, such that Robinson’s age-verifying information would have been stored in the database of Burger’s network server 114. Id. at 95 (citing Ex. 1003 ¶ 176). Patent Owner does not provide separate arguments for claims 3, 14, and 17. PO Resp. 22. limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Burger and Robinson. The record does not contain evidence of objective indicia of nonobviousness. Upon consideration of all the evidence, we conclude that Petitioner has proved by a preponderance of the evidence that claims 3, 14, and 17 would have been obvious over Burger and Robinson.” slip op. at 36

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

    “We find that, after Burger’s network server 114 authenticates a user’s pocket vault ID, the user is granted access to pocket vault 102 and can select a transaction from a displayed menu, including use of a credit card. subsequent access to that credit card information, either by displaying it or through token 102a, is because network server 114 sent a communication to pocket vault 102 indicating that it successfully authenticated the pocket vault. Ex. 1003 ¶ 115. This is the obvious inference a skilled artisan would have drawn from Burger’s description of authenticating the pocket vault and subsequently allowing credit card information to be used. Thus, we find that, in this example, the operator of network server 114 is a third party that operates a trusted authority, the principle parties to the transaction are the user of pocket vault 102 and the retailer, and a message from network server 114 to pocket vault 102 allowing the credit card to be used (displayed or encoded in the token) is an access message allowing the user access to the application (file with credit card information). Accordingly, we find that this example of Burger teaches claim limitations 1.4 and 1.5.” slip op. at 22

  Patent outcomesUS 8,886,954 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,886,954
• Yealink (USA) Network Technology Co., Ltd. / Yealink Network Technology Co., Ltd. v. Barco NVInstituted
  PTAB · Oct 7, 2025 · IPR2025-00597 · APJ David C Mckone · IPR · Institution

  The Board instituted review of claims 1–22 on all asserted grounds after finding a reasonable likelihood that claims 1–22 would have been obvious over Beel and Dinka.

  RulingsInstitution decision

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

    “In sum, on the current record, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over Beel and Dinka. f) Claims 2–22 The parties present their arguments for independent claim 11 along with those for claim 1. Pet. 44–45; Prelim. Resp. 19, 23. Claims 2–10 and 22 depend, directly or indirectly, from claim 1. Claims 12–21 depend, directly or indirectly, from claim 11. Patent Owner does not present separate arguments for claim 11 or the dependent claims. We have analyzed Petitioner’s arguments and evidence for claims 2–22 (Pet. 36–46) and, on the current record, conclude that Petitioner has shown sufficiently that claims 2–22 would have been obvious over Beel and Dinka.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of Dr. Almeroth and alleged admissions by Patent Owner in litigation, contends that a person of ordinary skill in the art would have had “a Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field” and that “[a]dditional educational experience could substitute for some of the work experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–37). “Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this time.” Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’346 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther

    “Patent Owner accepts the Petition’s claim construction for the purposes of” the Preliminary Response. Prelim. Resp. 5–6. In light of Patent Owner’s acceptance, and because the proposed constructions are, on this record, consistent with the evidence cited by Petitioner, we, too, accept Petitioner’s proposals for “providing simulations or translations, as required,” and “data transformations,” as recited in claim 1, for purposes of this Decision. Based on the record before us, we do not find it necessary to provide express claim constructions of any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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 8

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

    “Patent Owner argues that Dr. Almeroth does not provide a reason why a skilled artisan would have been motivated to combine Beel and Dinka, and that, instead, he “summarily concludes that Skype’s status as ‘well-known’ somehow would have motivated the combination of Dinka with Beel.” Prelim. Resp. 16. We disagree. Dr. Almeroth testifies that Skype, as taught in Dinka, would have been an example of the type of application that would have run on Beel’s system and that applying Dinka’s teachings would have improved Beel’s similar system in the same manner as it improved Dinka’s, with predictable results. Ex. 1002 ¶¶ 117, 132. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976))). On the current record, including Dr. Almeroth’s testimony, Petitioner’s proposed reasons to combine the teachings of Beel and Dinka have rational underpinning.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,966,346

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.