• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

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

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

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

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• Masimo Corporation v. Apple Inc.All claims unpatentable
  PTAB · Oct 1, 2024 · IPR2023-00734 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious under §103 over the combinations of prior art identified in the eight grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Cf. PO Resp. 14 (Patent Owner stating that “[t]he analysis presented [in the Response] remains unchanged even if [Petitioner’s proposed] skill level is applied.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12

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

    “Petitioner proposes constructions for certain terms concerning the cover material—“a cover formed from a dielectric material,” “a transparent substrate,” and “a cover comprising a non-conductive material”—and window terms such as “defines at least one window” and “window defined.” Pet. 7–10. Patent Owner states that it does not take a position regarding Petitioner’s offered constructions. PO Resp. 15. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 13

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

    “Patent Owner argues that a person of ordinary skill in the art would not have been motivated to make the proposed combination and would not have had a reasonable expectation of success in making that combination. See, e.g., PO Resp. 34–35. These arguments are not persuasive at least because Patent Owner’s motivation requirement and implied definition of success are not sufficiently tied to the claimed invention. See, e.g., Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375 (Fed. Cir. 2023) (“Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”). Patent Owner would require a successful outcome to be “quick and efficient wireless charging.” See PO Resp. 34–35. In making these arguments, Patent Owner is improperly superimposing the purported goals and purpose of Honda, the secondary reference, onto the ordinary artisan. See, e.g., id. at 41–45. However, the intended purpose of a prior art reference does not control the obviousness inquiry. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Our reviewing court recently explained: The [motivation-to-combine] inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue. A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed and that a skilled artisan may be motivated to combine particular features of different references, e.g., to secure some benefits at the expense of others, even when bodily incorporation would be impossible or inadvisable. Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). Petitioner’s combination yields the benefit of the addition of wireless charging capability to a biosensor device. A person of ordinary skill in the art would find that benefit to be a motivating reason to make the combination. See, e.g., Ex. 1003 ¶ 176 (Dr. Duckworth’s motivation opinion based, in part, on “Kotanagi’s own statement that its rechargeable battery can be recharged ‘in a contactless state.’”); id. ¶ 149 (Dr. Duckworth describing a motivating factor in “Honda’s teaching of a wireless receive coil near a rear opening similar to that taught in Kotanagi (where both Honda’s and Kotanagi’s openings have a cover glass)” and opining that, in the proposed modifications, “the resulting magnetic flux would pass through the cover glass, as taught by Honda”); see also Ex. 1052, 45:16–46:2 (Dr. Anthony, on cross-examination and after being asked whether wireless charging is an improvement over wired charging for a consumer watch, responding that “in some instances it could be, and in others it may not be.”). And, as to a reasonable expectation of success, Patent Owner admits that “Petitioner has presented a device configuration in which a wireless charging coil could be provided in Kotanagi’s through hole 22.” PO Resp. 54; see also id. at 3 (Patent Owner arguing that “the size of coil that could be provided in this allegedly available space would be small and would significantly limit the amount of wireless power signal transmission,” but not arguing that even Patent Owner’s purported size-limited configuration would be inoperative); see, e.g., Ex. 1003 ¶¶ 155–156 (Dr. Duckworth credibly testifying that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Kotanagi and Honda).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “would limit the size and positioning of a charging coil, and that the purported combination, as characterized by Patent Owner, would result in a “significantly degrad[ed] wireless charging efficiency” of Honda’s coil. PO Resp. 41–42; see id. at 36–45, id. at 55 (Patent Owner arguing that, “given the size restrictions imposed by Kotanagi,” the housing and cover glass cannot be expanded to allow for a larger coil). Patent Owner further argues that the combination would have to be configured a certain way and that the resulting configuration would “would frustrate Honda’s goals and intended purpose.” Id. at 37–38, 40–41; see also, e.g., id. at 43–44 (Patent Owner arguing that the combination, as characterized by Patent Owner, would inject noise and interference that are contrary to Honda’s goals of quick and efficient power transmission). We do not agree with this line of argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). The person of ordinary skill in the art is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). As the Supreme Court recognized in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. Dr. Duckworth persuasively testifies that, “if, under the relevant engineering trade-offs, a POSITA wanted to increase charging speed, consistent with Honda’s teachings, Honda would have provided the motivation and information to either re-size or reshape Kotanagi’s protrusion and/or cover glass to provide for a larger coil.” Ex. 1060 ¶ 346; see also Ex. 1003 ¶¶ 157–159 (“[I]t would have been feasible to make the second modification option discussed above: to enlarge Kotanagi’s opening and cover glass to make room for a coil behind the cover glass, surrounding the LED and PD.”); Ex. 2039, 47:5–10 (“[A] POSITA would view Honda’s teachings to either modify Kotanagi to position wireless charging coil behind Kotanagi’s cover glass or enlarge the Kotanagi’s opening and cover glass to make room for a coil behind the cover glass.”); PO Resp. 44 (Patent Owner admitting that Honda teaches that metal is inferior for power transmission and “[t]his is precisely why Honda seeks to provide glass for its rear cover.”). And, although the references express certain goals, Patent Owner does not adequately identify any disclosure in either reference that disparages Petitioner’s articulated combination. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). Even if, as Patent Owner argues, the proposed combination would not quickly charge the device, this is not dispositive. Dr. Anthony agrees that “[d]evices, depending on their use and their function, can benefit from either fast charge or trickle charge or a little bit of charge.” Ex. 1052, 19:3–6. “It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” Intel Corp., 21 F.4th at 800 (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”); 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.”). Based upon the final record before us, we find that a person of ordinary skill in the art would consider even a slow charging configuration to be a suitable option.” slip op. at 29

  Patent outcomesUS 10,942,491 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,942,491
• Masimo Corporation v. Apple Inc.Some claims unpatentable
  PTAB · Sep 23, 2024 · IPR2023-00634 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–5, 9, 10, 14, 15, and 17–20 are unpatentable as obvious; claims 6–8, 11–13, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Cf. PO Resp. 16 (Patent Owner stating that “[t]he analysis presented [in the Response] remains unchanged even if [Petitioner’s proposed] skill level is applied.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11

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

    “We find Patent Owner’s position to be persuasive. Not only are the cover and biosensor module recited separately in the list of components of the device of claim 9, we also agree that the “disposed over” claim language establishes the configuration of two separate components relative to each other. Additionally, the claim language that requires the cover to be “configured to pass optical signals to and from the biosensor module” supports an interpretation where the cover is separate from the biosensor module, otherwise it seemingly would be passing signals to and from itself. The understanding that the cover is separate from the biosensor module in claim 9 is consistent with the Specification’s description of an embodiment that tracks the language of claim 9 and speaks of the two elements as separate, individual components, namely the statement that “[a] biosensor module may be disposed within the opening of the housing” and “[a] rear cover may be disposed over the biosensor module.” Ex. 1001, 2:59–62; see also id. at 2:56 (the same paragraph beginning with “Some embodiments . . .”). Petitioner asserts that its proposed construction is consistent with the claim language, arguing that “the word ‘cover’ naturally suggests that its role is to be ‘disposed over,’” and that “[a] cover can be part of a module just as a clear plastic lid can be both disposed over, and part of, a container, allowing a view of its contents.” Pet. Reply 4. We disagree with Petitioner’s analogy. Although a clear lid may be over a jar, it cannot be said to be “disposed over” the container consisting of both the jar and the lid because it then would be disposed over itself.” slip op. at 14

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

    “Patent Owner argues that the proposed combination will result in a configuration “that is contrary to Honda’s teachings and its stated goals and purpose of achieving quick and efficient wireless charging.” PO Resp. 30– 31. Patent Owner’s focus on these properties is misplaced. We agree with Petitioner that characteristics such as charging speed and efficiency are not claimed. See Pet. Reply 1 (“[T]he ’783 patent does not disclose, let alone claim, sizing or other details [Patent Owner] Apple asserts are necessary for successful wireless charging.”); id. at 6 (“[C]harging speed [is] not claimed.”). Rather, the claim drafter utilized broad language to encompass a biosensor device having the capability to wireless charge through a cover— both good configurations and those that Patent Owner argues are inferior. And, even if the proposed combination does not yield a commercially viable product, as Patent Owner implies, the broad claim scope would hinder an innovating competitor’s ability to utilize and test that purported less desirable combination on the way to development of a better device. Patent Owner argues that a person of ordinary skill in the art would not have been motivated to make the proposed combination and would not have had a reasonable expectation of success in making that combination. See, e.g., PO Resp. 31. These arguments are not persuasive at least because Patent Owner’s motivation requirement and implied definition of success are not sufficiently tied to the claimed invention. See, e.g., Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375 (Fed. Cir. 2023) (“Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”). Patent Owner would require a successful outcome to be “quick and efficient wireless charging.” See PO Resp. 31. In making these arguments, Patent Owner is improperly superimposing the purported goals and purpose of Honda, the secondary reference, onto the ordinary artisan. See, e.g., id. at 37–41. However, the intended purpose of a prior art reference does not control the obviousness inquiry. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Our reviewing court recently explained: The [motivation-to-combine] inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue. A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed and that a skilled artisan may be motivated to combine particular features of different references, e.g., to secure some benefits at the expense of others, even when bodily incorporation would be impossible or inadvisable. Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). Petitioner’s combination yields the benefit of the addition of wireless charging capability to a biosensor device. A person of ordinary skill in the art would find that benefit to be a motivating reason to make the combination. See, e.g., Ex. 1003 ¶ 121 (Dr. Duckworth’s motivation opinion based, in part, on “Kotanagi’s own statement that its rechargeable battery can be recharged ‘in a contactless state.’”); id. ¶ 127 (Dr. Duckworth’s describing a motivating factor in Honda’s explanation “that this [charging] station passes wireless power to the wireless charging receiving coil through a rear cover glass (similar to that of Kotanagi), using the physics of induced currents and magnetic flux.”); see also Ex. 1052, 45:16–46:2 (Dr. Anthony, on cross-examination and after being asked whether wireless charging is an improvement over wired charging for a consumer watch, responding that “in some instances it could be, and in others it may not be.”). And, as to a reasonable expectation of success, Patent Owner admits that “Petitioner has presented a device configuration in which a wireless charging coil could be provided in Kotanagi’s through hole 22.” PO Resp. 56; see also id. at 3 (Patent Owner arguing that “the size of coil that could be provided in this allegedly available space would be small and would significantly limit the amount of wireless power signal transmission,” but not arguing that even Patent Owner’s purported size-limited configuration would be inoperative); see, e.g., Ex. 1003 ¶¶ 130–133 (Dr. Duckworth credibly testifying that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Kotanagi and Honda).” slip op. at 31

  Patent outcomesUS 10,627,783 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,627,783
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Sep 11, 2024 · IPR2023-00664 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–24 were not determined unpatentable because the cited combinations failed to teach or suggest the claimed selectable widget functionality and lacked a coherent rationale to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34).” slip op. at 7

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

    “In our Decision to Institute, we construed “input that is directed to a portion of” a user interface. Paper 8, at 9; see also Pet. 24–25. Because this interpretation is not necessary for our final determination, we do not repeat it here.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3. Petitioner’s reliance of the testimony of Dr. Rosenberg (see Ex. 1003 ¶ 91) is unpersuasive because Dr. Rosenberg merely restates the Petitioner’s assertions without reliance on persuasive evidence of record. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, at 5 (Feb 10, 2023) (Vidal, Dir.) (“[T]he Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support and repeated, verbatim, Petitioner’s conclusory arguments.”). When addressing Chae’s three graphics in Figure 6(b) during cross-examination, Dr. Rosenberg testifies that “[t]hey’re not a numbered element, so they’re not spoken about specifically those three ones”). Ex. 2005, 56:9–14, 54:21–22 (“Chae doesn’t talk about the weather icon”). Further, the final record does not support Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood that “part of the well-known functionality of widgets was that selecting a widget would cause ‘display of an application corresponding to the respective user interface object.’” Ex. 1003 ¶ 91. None of the references relied upon by Petitioner discloses this alleged “well-known functionality of widgets,” nor does the evidence of record support any industry standard usage of the term widget in the appropriate timeframe. See Ex. 2003 ¶¶ 46–48. Petitioner has also not persuasively shown that selections of Chae’s SIM card icons result in the display of an application as claimed. See Ex. 1005 ¶¶ 152–154, Fig. 22; see also Tr. 43:14–17 (“the claimed interface object causes display of the corresponding application, but selection of this paragraph 152, Figure 22 widget causes selection of something different, a sim environment.”). We find Patent Owner’s position more persuasive, when Chae uses the word widget, it is not using that word to refer to something that launches into an application, but instead Chae’s widgets show use-state information related to a SIM environment. See Ex. 1005 ¶¶ 152–154; Tr. 33:3–12. Specifically, Chae discloses “widgets that show use-state information of the first and second SIMs (SIM1 and SIM2),” and “when a user selects one of [the] widgets,” it “unlocks the SIM corresponding to the dragged widget.” Ex. 1005 ¶¶ 152, 153, Fig. 3 (unlocking SIM displays home screen customized to unlocked SIM). Chae does not support that these widgets relate to the graphic items in its Figure 6(b), nor does Chae explain how its widgets could be understood as the claimed “user interface objects” of the widget screen user interface. As explained persuasively by Dr. Cockburn, “the only widgets that are described in Chae are widgets relating to the use state of the multiple SIM cards,” and “[t]hese widgets described in Chae do not correspond to applications and thus do not cause display of applications when the widgets are selected.” Ex. 2003 ¶ 46 (quoting Ex. 1005 ¶ 152).” slip op. at 25

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

    “Based on the final record before us, we conclude that Petitioner has not persuasively shown that the combination of prior art teaches the required widget limitation of “a respective user interface object . . . when selected, causes display of an application corresponding to the respective user interface object” as recited in claim 1. Petitioner relies on Chae’s Figure 6(b), which is reproduced below: Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3.” slip op. at 24

  Patent outcomesUS 11,106,352 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,106,352
• Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00004 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–4, 9–11, 17, and 18 are unpatentable: claims 1–4, 9, 11, and 17 as obvious over Sfarti and Foley; claims 10 and 18 as obvious over Sfarti, Foley, and Möller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the ’299 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 10–11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’299 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 20–21. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 9

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

    “function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “renderer unit”, and “tessellate unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’299 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”).” slip op. at 15

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

    “transforming is performed by a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the disclosed microcode. See Ex. 1001, 5:20–29, 5:51–67, 7:1–8, 7:12–13, 12:24–28; Ex. 1003 ¶¶ 104–105. We construe “transform unit” as a means-plus-function limitation with the function of transforming graphic objects into transformed objects (claims 1 and 11) including control points (claims 2 and 11), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the specification. The foregoing construction of “transform unit” is identical to the preliminary construction in the Institution Decision, with two exceptions. First, it adds that the corresponding structure is a GPU with computer graphics pipeline hardware including a processor. See Inst. Dec. 22–23. We agree with Patent Owner’s contention that the ’299 patent describes such pipeline hardware as being part of “[t]he present invention,” so we include it in our construction. Ex. 1001, 5:20–29. Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 22–23; Pet. 11–12. As Patent Owner points out, the ’299 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude the claim is open to both a dedicated processor and a non-dedicated processor.” slip op. at 19

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

    “7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 25

  Patent outcomesUS 7,245,299 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,245,299
• Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentable
  PTAB · Apr 16, 2024 · IPR2022-01589 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–4, 9–11, 17, and 18 are unpatentable as obvious over Sfarti and Foley, with claims 10 and 18 also unpatentable over Sfarti, Foley, and Möller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the ’299 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 10–11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’299 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 20–21. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 9

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

    “function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “renderer unit”, and “tessellate unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’299 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”).” slip op. at 15

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “transforming is performed by a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the disclosed microcode. See Ex. 1001, 5:20–29, 5:51–67, 7:1–8, 7:12–13, 12:24–28; Ex. 1003 ¶¶ 104–105. We construe “transform unit” as a means-plus-function limitation with the function of transforming graphic objects into transformed objects (claims 1 and 11) including control points (claims 2 and 11), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the specification. The foregoing construction of “transform unit” is identical to the preliminary construction in the Institution Decision, with two exceptions. First, it adds that the corresponding structure is a GPU with computer graphics pipeline hardware including a processor. See Inst. Dec. 22–23. We agree with Patent Owner’s contention that the ’299 patent describes such pipeline hardware as being part of “[t]he present invention,” so we include it in our construction. Ex. 1001, 5:20–29. Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 22–23; Pet. 11–12. As Patent Owner points out, the ’299 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude the claim is open to both a dedicated processor and a non-dedicated processor.” slip op. at 19

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

    “7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 25

  Patent outcomesUS 7,245,299 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,245,299
• Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentable
  PTAB · Apr 16, 2024 · IPR2023-00006 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 10–20 are unpatentable as obvious over Sfarti and Foley because the combination teaches the claimed graphics pipeline, including a tessellation unit between transformation and lighting.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the ’534 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’534 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 7–8. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 8

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

    “function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “rendering unit”, and “tessellating unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’534 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Mr. Van Dyke’s apparent disagreement with this” slip op. at 14

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

    “Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 10; Pet. 14– 15. As Patent Owner points out, the ’534 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude that the claim is open to both a dedicated processor and a non-dedicated processor. Nonetheless, we agree with Petitioner’s position that the transform unit encompasses, at least in some embodiments, a different unit from the other three claimed units. This is suggested by the language of claim 10, which refers to each of the units separately. Claim 10 additionally refers to the tessellation unit being “coupled between the transform unit and the lighting unit,” demonstrating that at least those three units can be different units. Further, Figure 3 of the ’534 patent correspondingly illustrates four separate units 2, 9, 3, and 4 within GPU 7. See Ex. 1001, Fig. 3, 7:4–15. Thus, although the transform unit may perform functions other than the transforming function, the transform unit in at least some embodiments does not perform the lighting, rendering, or tessellating functions of the other claimed units. In summary, we construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the ’534 patent specification. Further, the transform unit does not perform the lighting, rendering, or tessellating functions of the other claimed units.” slip op. at 18

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

    “7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 23

  Patent outcomesUS RE42,534 unpatentable
  Claim construction§ 103 obviousnesscites Graham
• Intel Corporation / Dell Technologies Inc. et al. v. 3d Surfaces, LLCAll claims unpatentable
  PTAB · Apr 16, 2024 · IPR2022-01591 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 10–20 are unpatentable as obvious over Sfarti and Foley because their combination teaches the claimed graphics pipeline, including a tessellation unit between transformation and lighting.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the ’534 patent “would have had at least a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related scientific field, and approximately two years of work experience in computer graphics or, alternatively, two years[’] work towards a masters or doctorate degree in these scientific fields.” Pet. 10; Ex. 1003 ¶¶ 96–97. Patent Owner applies Petitioner’s formulation of ordinary skill in the Patent Owner Response. See PO Resp. 11; Ex. 2005 ¶ 31. Based on the record presented, we now find as we did in the Institution Decision that Petitioner’s formulation of the level of ordinary skill in the art is consistent with the level of skill reflected in the ’534 patent and the prior art of record, and is not disputed by Patent Owner. See Inst. Dec. 7–8. We, therefore, apply Petitioner’s formulation in this Decision.” slip op. at 8

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

    “function limitations subject to § 112, ¶ 6, we conclude that they are. Because the Unit Terms do not use the word “means,” we apply a rebuttable presumption that § 112, ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part). Nonetheless, as Petitioner argues, the claim term “unit” does not connote any particular structure, and the terms “transform unit”, “lighting unit”, “rendering unit”, and “tessellating unit” recite function without reciting sufficient structure for performing that function. The “unit” term at issue here is closely akin to the “module” term at issue in Williamson, and similarly generic terms such as “element” and “device,” and is, therefore, in the context of the ’534 patent claims and specification, a “nonce” word used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51; see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298–1301 (Fed. Cir. 2018) (holding the claim term “cheque standby unit” was subject to § 112, ¶ 6, because it failed to “recite any structure, much less ‘sufficiently definite structure,’” and the claim recited a function without reciting sufficient structure for performing that function, despite an expert witness’s contrary testimony); WSOU Invs. LLC v. Google LLC, No. 2022-1066, 2023 WL 6210607, at *4 (Fed. Cir. Sept. 25, 2023) (stating “the term ‘unit,’ in a vacuum, is defined only by the function it performs, much like terms such as ‘element’ or ‘means’” and “[a] ‘unit’ could be almost anything”).4 We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112, ¶ 6 is overcome in this case, because the Unit Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”).” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “preliminary construction in the Institution Decision, with two exceptions. First, it adds that the corresponding structure is a GPU with computer graphics pipeline hardware including a processor. See Inst. Dec. 10. We agree with Patent Owner’s contention that the ’534 patent describes such pipeline hardware as being part of “[t]he present invention,” so we include it in our construction. Ex. 1001, 5:25–34. Second, our construction does not require a dedicated processor, which is part of Petitioner’s claim construction. See Inst. Dec. 10; Pet. 14– 15. As Patent Owner points out, the ’534 patent specification does not include the term “dedicated.” To the extent Petitioner’s “dedicated” term is meant to require that the processor is programmed solely to perform the claimed transforming function, to the exclusion of any other processing, we conclude that the claim is open to both a dedicated processor and a non-dedicated processor. Nonetheless, we agree with Petitioner’s position that the transform unit encompasses, at least in some embodiments, a different unit from the other three claimed units. This is suggested by the language of claim 10, which refers to each of the units separately. Claim 10 additionally refers to the tessellation unit being “coupled between the transform unit and the lighting unit,” demonstrating that at least those three units can be different units. Further, Figure 3 of the ’534 patent correspondingly illustrates four separate units 2, 9, 3, and 4 within GPU 7. See Ex. 1001, Fig. 3, 7:4–15. Thus, although the transform unit may perform functions other than the transforming function, the transform unit in at least some embodiments does not perform the lighting, rendering, or tessellating functions of the other claimed units. In summary, we construe “transform unit” as a means plus function limitation with the function of transforming graphic objects into transformed objects (claims 10 and 15), or the function of transforming the spatial coordinates of said graphic objects (claim 12), and with the corresponding structure of a GPU with computer graphics pipeline hardware including a processor programmed to execute the transforming step of the microcode disclosed in the ’534 patent specification. Further, the transform unit does not perform the lighting, rendering, or tessellating functions of the other claimed units.” slip op. at 18

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

    “7. Remaining Claim Terms Upon review of the arguments and evidence, we determine no further construction of any claim term is needed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 23

  Patent outcomesUS RE42,534 unpatentable
  Claim construction§ 103 obviousnesscites Graham
• Platinum Optics Technology, Inc. v. Viavi Solutions Inc.All claims unpatentable
  PTAB · Apr 11, 2024 · IPR2022-01489 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: Hendrix anticipates them, and the listed combinations also render their respective claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In the Decision on Institution, we adopted a slightly modified version of this definition in which we removed the open-ended term “at least.” Inst. Dec. 10–11. Patent Owner does not address the definition of a POSA. See generally PO Resp. Patent Owner’s declarant Dr. Clemens applies Petitioner’s definition, but does not opine on whether it is correct. Ex. 2001 ¶¶ 22–23. As in the Decision on Institution (Inst. Dec. 10), we apply the same slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the” slip op. at 11

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

    “filter comprises “a third set of layers on the second side, whether the third set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner agrees that this is the “literal” reading of the language, but contends that one of ordinary skill in the art “would have appreciated that this language was intended to read ‘wherein’ rather than ‘whether’” and that the claim requires that this set of layers must include oxygen. PO Resp. 24–26 (citing Ex. 2001 ¶¶ 53–55). We agree with Petitioner’s representation that each of the challenges presented either anticipates or renders obvious a third set of layers with oxygen on a second side of a substrate (Pet. 8) and therefore, no claim construction is necessary for this term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “415 F.3d at 1314): “a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen” (claim 1) and “a first set of layers including silicon and hydrogen” (claims 9 and 15). Ex. 1001, 10:41–49, 10:65–11:4, 11:17–12:5. As the parties agree, these recitations are broadly worded. See Pet. 14 (describing the recitations of the claims as “broad” and directed to “layers of any material that has both ‘silicon and hydrogen’”); PO Resp. 42 (describing the claims as “simply specifying physical layers including silicon and hydrogen in them”), 44 (describing the disputed terms as “open-ended claiming of layers including hydrogen and silicon”). Despite this broad language, Patent Owner contends that we must read “layers including silicon and hydrogen” in conjunction with other limitations in the claims reciting a “near infrared bandpass filter.” PO Resp. 35–37 (citing Ex. 2001 ¶¶ 65–66). For purposes of our analysis, we limit “layers including silicon and hydrogen” to only materials suitable for NIR bandpass filters, as suggested by Patent Owner. We next examine the rest of the intrinsic evidence. The specification of the ’794 patent does not contain language that generally describes “layers including silicon and hydrogen.” Instead, the specification describes only layers of hydrogenated silicon: its abstract is directed to an “optical filter” that “includes a filter stack formed of hydrogenated silicon layers” (Ex. 1001, code (57)); the technical field of the invention is described as “relat[ing] to optical filters including hydrogenated silicon layers and to sensor systems comprising such optical filters” (id. at 1:20–23); the summary of the invention describes “the present invention” as an optical filter or sensor system “comprising” “a plurality of hydrogenated silicon layers” (id. at 2:57–3:19); and the detailed description begins with a hydrogenated silicon (Si:H) layers” (id. at 4:19–20). The specification only mentions silicon and hydrogen separately with respect to the disclosed sputter-deposition system “used to produce the hydrogenated silicon material.” Id. at 4:35–5:61, 7:10–19. In particular, the specification describes how “cathode 430 includes a silicon target 431, which is sputtered in the presence of hydrogen (H2), as well as an inert gas such as argon, to deposit the hydrogenated silicon material as a layer on the substrate 420.” Id. at 4:44–47. The specification also describes how altering the hydrogen flow rate in the deposition process affects the optical properties of hydrogenated silicon produced by the deposition system. See id. at 5:1–61. But the only end product described from the sputter-deposition process using silicon and hydrogen is hydrogenated silicon. See id. at 4:35–5:61, 7:10–19. As such, the specification does not provide any indication of materials beyond hydrogenated silicon that are within the scope of “layers including silicon and hydrogen.”” slip op. at 15

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

    “hydrogen” defines a genus. The test for providing a written description that supports a genus claim is whether the description provides “either a representative number of species falling within the scope of the genus or in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). “Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared.” Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358 (Fed. Cir. 2023). Yet the patentees only disclosed hydrogenated silicon as a possible species. Indeed, the specification focuses on a singular example of a sputterdeposition system that is used to produce an improved hydrogenated silicon material. See Ex. 1017 ¶¶ 36–38. Patent Owner cites this deposition process as written description support for “the claimed layers containing silicon and hydrogen.” See PO Resp. 44. But this example supports only how to make hydrogenated silicon and does not include any indication about what other materials would be within the scope of the claimed genus. Under these circumstances, the specification’s disclosure of a single species is not an adequate number to show possession of the entire genus of “layers including silicon and hydrogen.” Beyond the disclosure of the sputter-deposition process for producing hydrogenated silicon, Patent Owner does not identify—and we cannot discern—any other examples of a “structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350. This is particularly noteworthy given that undisputed record evidence shows numerous other potential filter materials “including silicon and hydrogen.” See supra § II.D.1.a. In the absence of structural description supporting “layers including silicon and hydrogen,” we determine that an” slip op. at 19

  Patent outcomesUS 11,131,794 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,131,794
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · Feb 29, 2024 · IPR2022-01357 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1, 2, 4, 6, 9, 10, 14–17, 21, 22, and 24–26 are unpatentable as obvious over the asserted combinations of Park, Kim, Hileman, Pugliese, and Mault.

  RulingsFinal written decision

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

    “does not equate an “acquisition request” exclusively with a shopping or purchase request. See Ex. 3006, 10–11. Rather, the specification repeatedly uses the phrase “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:25–27 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:56–58 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121.”); id. at 2:24–28 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”) (emphases added). Consumeron’s argument that the specification “uses the word ‘or’ to refer to things that are synonymous to each other” is not persuasive. See PO Resp. 10; see also PO Sur-Reply 3–4 (essentially same). As noted above, the specification uses the phrase “purchase or otherwise acquire.” Ex. 1001, 5:25–27, 7:56–58 (emphasis added); see also id at 2:24–28 (similar). By including the adverb “otherwise,” the specification makes clear that purchase and acquire are not used synonymously, but rather that acquiring is broader and encompasses other ways of obtaining a product. See Ex. 1039, 1 (“otherwise” means “in a different way or manner”). Indeed, the specification unequivocally describes instances where the delivery agent acquires a product without purchasing or shopping for it. For instance, the specification explains that the customer may “pre-purchase[]” goods such that the customer requests simply that the delivery agent “pick-up” of the goods: [T]he customer has the option of paying the retailer or seller directly, in which case the customer will only be billed for the pick-up and delivery services provided. . . . If pre-purchased by the customer, the delivery agent obtains a receipt showing proof of pre-payment by the customer. Id. at 8:15–23 (emphases added). Even more explicitly, the specification states that, “although discussed in the context of a customer who wishes to purchase a product, it should be understood that system 10 may be utilized to schedule both pick-ups and delivery of any type of goods, including free goods. Id. at 10:40–44 (emphasis added). Those disclosures collectively indicate that a delivery agent can fulfill an acquisition request without necessarily shopping for or purchasing goods. Consumeron attempts to distinguish those descriptions, urging that they refer to an “alternative” embodiment that “does not expand the meaning of the term ‘acquisition request’ beyond its ordinary meaning.” PO Sur- Reply 4. But that argument is premised on an incorrect assumption that the ordinary meaning is limited to purchasing or shopping. Here, nothing in the intrinsic record suggests that the term “acquisition request” excludes the specification’s embodiments where “pre-purchased” or “free” goods are only in need of “pick-up.” To the contrary, as noted above, the specification repeatedly states the delivery agent may “otherwise acquire” goods without purchasing them, thereby, indicating that the agent can fulfill an acquisition request without necessarily shopping for the goods on the customer’s behalf. See Ex. 1001, 5:25–27, 7:56–58.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “We previously construed the term “acquisition request” in the related 865 IPR to encompass “not only a request for an agent to shop for and purchase goods for delivery to a customer, but also to encompass a request for a delivery agent to simply pick up and deliver goods that have been prepurchased by the customer.” See Ex. 3006, 9–11 (granting institution in conjunction with construing “acquisition request”). As noted above in Section I.A (“Related Matters”), the 865 IPR centers on the ’465 patent, whose lineage derives from the same application—the ’867 application—as the ’835 patent challenged here. Compare Ex. 1001, 1:7–15 (referencing Appl. No. 12/711,867), with Ex. 3005, code (63) (also referencing Appl. No. 12/711,867). Indeed, the ’835 and ’465 patents share essentially identical specifications and figures. Thus, based on the final record before us (as discussed below) and consistent with our prior construction in the related 865 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the more reasonable one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). More specifically, as we explained in the 865 IPR, the specification does not equate an “acquisition request” exclusively with a shopping or purchase request. See Ex. 3006, 10–11. Rather, the specification repeatedly uses the phrase “purchase or otherwise acquire” to indicate that a delivery agent may acquire goods by means other than purchasing or shopping. See, e.g., Ex. 1001, 5:25–27 (“[T]he user specifies the exact location from which the selected delivery agent is to purchase or otherwise acquire the product, such as a retail store location.”); id. at 7:56–58 (“If the product is approved at 120, the delivery agent will purchase or otherwise acquire the product on behalf of the customer at 121.”); id. at 2:24–28 (“[T]he user provides the service provider with information regarding the type of product desired and the shopping or acquisition location from which the user desires to purchase or otherwise obtain the product.”) (emphases added).” slip op. at 7

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

    “Although the district court considered “intentional delay” in the course of construing the term “real time,” the district court does not appear to have accepted Consumeron’s narrower construction in that regard. More accurately, the district court stated it “sees no reason that a ‘real-time’ transmission of data could not both involve no inherent delay and permit a system that requires multiple ‘clicks’ to operate.” Ex. 1035, 24 (emphasis added). In addition, the district court quoted from a technical dictionary, which provided: The basic definition of real-time data is that it is data that is not kept or stored, but is passed along to the end user as quickly as it is gathered. It is important to note that real-time data does not mean that the data gets to the user instantly. There may be any number of bottlenecks related to the data collection infrastructure, the bandwidth between various parties, or even just the slowness of the end user’s computer. Real-time data does not promise data within a certain number of microseconds. It just means that the data is not designed to be kept back from its eventual use as it is collected. Id. at 25 (citing “Technopedia”). In other words, the district court contemplated that real-time data includes data that is transmitted as it is gathered despite some inherent delay in transmitting and accessing the data, such as bottlenecks in the infrastructure, slowness of the user’s computer, or “multiple clicks” by the user. With that in mind, we reject Consumeron’s attempt to alter our construction of “real-time” to exclude so-called “intentional delay.” Thus, consistent with the district court and our institution decision, we maintain that “real-time” transmission means “data that is passed along as it is gathered.”” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Instacart submits that one skilled in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa. Pet. 14 (citing Ex. 1003 ¶ 24). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like,” but that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 9 (citing Ex. 2016 ¶¶ 17–20). 1 WO 01/11523 A1, published Feb. 15, 2001 (Ex. 1005) (“Park”). 2 Certified translation of KR2003-0085802, published Nov. 7, 2003 (Ex. 1006); corrected certified translation of Figure 2 (Ex. 1038); and original Korean language version (Ex. 1007) (collectively, “Kim”). 3 US 2003/0040944 A1, published Feb. 27, 2003 (Ex. 1009) (“Hileman”). 4 US 2002/0072974 A1, published June 13, 2002 (Ex. 1010) (“Pugliese”). 5 US 2002/0027164 A1, published Mar. 7, 2002 (Ex. 1016) (“Mault”). We discern no material difference between the levels of skill in the art espoused by the parties. Nor does Consumeron’s expert. See Ex. 2016 ¶ 20 (“Petitioner’s definition of a POSITA is not materially different from my definition.”). Accordingly, we adopt the level of skill in the art as defined by Instacart.” slip op. at 6

  Patent outcomesUS 10,628,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,628,835

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