- Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. 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 Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 8,886,753 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,753 - PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations 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 skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - Silencerco Weapons Research, LLC v. Huxwrx Safety Co. LLCNo claims unpatentablePTAB · Dec 17, 2025 · IPR2024-01214 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 2, 3, 6, 9, 12–14, 18, and 20 were not shown unpatentable; the motion to amend was granted for substitute claims 23, 26, 27, 29, 30, 32, 33, 37–40, and 42, and denied for …
RulingsFinal written decision- Skill levelSkill level board ownOther
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The ’750 patent states that “the fluid pathway can be a radially serpentine fluid pathway which causes the fluids received in the off axis chamber to flow back and forth around a radius of the off axis chamber,” also using “radially serpentine fluid pathway” to refer to this rotation around the chamber radius “while also traversing a length of the off axis chamber.” Ex. 1001, 4:34–41 (emphasis added). This is the only description of “radially” serpentine flow in the ’750 patent. Notably, the ’750 patent does not use “radially” or “serpentine” to describe a fluid pathway “which causes the fluids to spiral around the central chamber within the off axis chamber along a length of the off axis chamber,” instead referring to such a fluid pathway as a “helical fluid pathway.” Id. at 4:41–44. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”). Inst. Dec. 11–12. We explained that the flow path depicted above, which is equivalent to that of Figure 14 of the ’750 patent, “flows circumferentially about the central chamber.” Id. at 14. We maintain this interpretation. Stated differently, the depicted flow is around a longitudinal axis of the chamber. See MTA PG 6 (describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber; that is, a circumferentially serpentine pathway”); see also Ex. 2003 ¶ 40 (Dr. Neitzel describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber”). The flow is not around a radius of the chamber, which Patent Owner recognizes is required for a flow path to be radially serpentine. See PO Resp. 10 (“Patent Owner agrees with the Board’s conclusion in the [Institution Decision] that ‘radially serpentine’ as recited in the claims of the ’750 patent means a back and forth flow around a radius of the off axis chamber.” (citation modified)); PO Sur-reply 2 (agreeing that “radially serpentine” requires “a back and forth flow around a radius of the off axis chamber”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that neither Petitioner nor its witness, Mr. Nixon, has explained adequately how Thurler’s disclosure of its tube e being perforated for two thirds of its length “contemplates other lengths of perforations.” See Pet. 48; Ex. 1013 ¶ 212. Such conclusory assertions fail to apprise us of why an ordinarily skilled artisan would have been motivated to modify Thurler’s device in contradiction to Thurler’s explicit disclosure. We are also not persuaded by Petitioner’s proffered reasoning for modifying Thurler’s device. First, the modification is not a matter of design choice because the perforations allow the gases generated by firing the projectile to pass into the space between tubes e and g where they partially expand. See Ex. 1015, 1:84–91. Thus, modifying the number of perforations necessarily affects the flow of gases through the device. Next, neither Petitioner nor Mr. Nixon explains adequately how reducing the amount of perforation in tube e results in an increased fluid length. See Pet. 49; Ex. 1013 ¶ 213. Rather, although less fluid may enter into tube e with Petitioner’s modification, it appears that that fluid would travel the same distance along tubes e and h as in Thurler’s unmodified device. Finally, neither Petitioner nor Mr. Nixon explains adequately how limiting the amount of gases generated by firing the projectile from entering the expansion zones of tubes g and h provides any benefit. To the contrary, limiting the amount of gases in the manner suggested by Petitioner would reduce the suppression of such gases, resulting in a less effective device. Moreover, Thurler discloses that “there is still a space of a few millimeters between [tubes] e and g which is necessary” to prevent the application of “pressure on the projectile causing the same to deviate.” Ex. 1015, 1:106–2:3. Thus, Petitioner’s modification would not result in the passage of gases occurring only at the first three of Thurler’s tubular sleeves as asserted by Petitioner. Additionally, in the Institution Decision, we explained that Petitioner did not provide adequate reasoning to support the proposed modification of Thurler’s device regarding parent claim 1 to have concentric tubes around the central tube e. See Inst. Dec. 29–31. This shortcoming, which we maintain, carries through to dependent claim 6. Accordingly, for the foregoing reasons, Petitioner has not shown, by a” slip op. at 26
- ScopeMotion to amend granted in partGranted in part
“We agree with Petitioner that the amendment is broadening. Petitioner’s witness testified that he “wouldn’t call a BB gun a high energy device or a high energy weapon.” Paper 33, 18:4–6. Thus, per Petitioner’s witness, use of a BB gun would not be covered by claim 22, no matter what is discharged from the BB gun. However, if high energy material is discharged from that same BB gun, that use would be covered by proposed substitute claim 43 (assuming the other claim recitations were met). See id. at 21:10–12 (Dr. Neitzel agreeing that “if something produces a high energy material, it automatically is a high energy weapon”). Thus, by deleting “high energy device” and replacing that language with “weapon,” proposed substitute claim 43 impermissibly broadens the scope of claim 22. See Sisvel Int'l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1241 (Fed. Cir. 2023) (“But if a substitute claim ‘is broader in any respect it is considered to be broader than the original claim even though it may be narrower in other respects.’” (citation modified) (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999))); see also Lectrosonics, Paper 15 at 6 (“A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent . . . . Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent.”).” slip op. at 45
Patent outcomesUS 8,286,750 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,286,750 - PTAB · Nov 12, 2025 · IPR2025-00959 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1, 5-9, 13-17, and 25-27 across all petitioned grounds, finding a reasonable likelihood of obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition. B. Real Parties in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the field of the ’016 Patent would have had: a degree in computer science or computer engineering, along with 2 years of professional experience working with telecommunications systems, or an equivalent level of skill, knowledge, and experience. . . . This POSITA would have been aware of and generally knowledgeable about the standard features and functionality of emergency calling, geolocation, and text messaging systems. Pet. 15. For the purposes of its Preliminary Response, Patent Owner “does not challenge that definition.” Prelim. Resp. 5. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceedings, including the asserted prior art and the ’016 Patent, and we adopt and apply that definition for purposes of this Decision. C. Claim Construction” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During the reissue proceedings that led to the ’016 Patent, Patent Owner represented that “the ’016 patent claim limitations requiring a ‘call reception module,’ ‘presentation module,’ ‘outgoing message module,’ and ‘transmission module’ are not means-plus-function limitations and instead require only “computer program modules that are executed by processors, rather than a generic description for software or hardware.” Ex. 1003, 156– 169; see Pet. 14. For the purposes of these proceedings only, Petitioner accepts these representations and asserts that “[n]o terms require further construction and all terms can be afforded their plain and ordinary meaning.” Id. at 14–15. For the purposes of its Preliminary Response, Patent Owner agrees with Petitioner. Prelim. Resp. 5. After reviewing the parties’ arguments and evidence, we determine that no express constructions of any terms are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“To establish a motivation to combine multiple prior art references, it is not necessary to identify some deficiency in the primary reference that can only be remedied by combining that reference with another. The proposed the primary reference. See, e.g., Honeywell Int’l Inc. v. 3G Licensing, S.A., 124 F.4th 1345, 1355–56 (Fed. Cir. 2025) (Obviousness “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”); see also KSR, 550 U.S. at 420 (“[T]he problem motivating the patentee may be only one of many addressed by the patent’s subject matter.”). The relevant question is not whether the proposed combination is the most desirable combination available. Rather, it is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of the claimed invention.” Honeywell, 124 F.4th at 1355 (citations omitted). Here, Petitioner has identified reasons why it would have been desirable to modify the system of Brooks to include the texted URL link of SARLOC: the caller would not need any special technical skills or equipment; existing smartphone functionality would be capable of collecting the location information; and SARLOC simply represents a specific example of a general concept taught in Brooks, that of exchanging location information through text messages. Pet. at 38–39. Because the claimed modification need only be a suitable option, rather than the “best” or “preferred” approach, Patent Owner’s argument is unpersuasive.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · Oct 31, 2025 · IPR2025-00873 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1–14 on all asserted grounds after finding a reasonable likelihood that claim 1 is obvious over Gilmour, Merriman, and Frauenhofer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has established a reasonable likelihood of prevailing on at least one challenged claim is unpatentable. Thus, for reasons explained below, we institute inter partes review of claims 1–14 of the ’445 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1002 ¶¶ 30–34). Petitioner asserts that the POSA’s education “could include a bachelor’s degree in business or economics, with an emphasis on the use of technology in marketing or advertising” or “similar knowledge gained through actual work experience.” Id. Alternatively, the POSA’s education could include “a bachelor’s degree in computer science or equivalent industry experience, and work with a team that includes software engineers.” Id. According to Petitioner, the POSA “could also have qualified with more formal education and less technical experience, or vice versa.” Id. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’445 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner “applies plain-and-ordinary meaning to all terms.” Pet. 20. We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, 8 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 successInstituted
“Petitioner recognizes that the combination of Gilmour and Merriman alone “does not disclose that the profile owner computer automatically 17 selects a media property entity of a plurality of media property entities based on a comparison of the profile information with a plurality of stored requests from the plurality of media property entities.” Id. at 42. To address this deficiency, Petitioner asserts that Frauenhofer “discloses automatically selecting a user of a plurality of users based on a comparison of content with the plurality of stored requests from the users.” Pet. 44 (citing Ex. 1014, 3:12–19). Petitioner argues that it would have been obvious to combine Frauenhofer’s teachings with those of Gilmour and Merriman to arrive at the claimed method. Id. According to Petitioner a POSA “would have been motivated to make this combination because it would conveniently allow Gilmour’s requesting entities (which are media property entities) to make initial requests to the profile service provider, and then automatically receive profiles matching the requests on an ongoing or periodic basis.” Id. at 45. (citing Ex. 1010, 41; Ex. 1011, 39–40, 51; Ex. 1012 ¶ 25; Ex. 1013, 3:20– 23; Ex. 1002 ¶ 155).” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,984,445 - PTAB · Oct 16, 2025 · IPR2025-00702 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 4, 5, 16, 17, and 19 on all asserted grounds after finding a reasonable likelihood that claim 4 was obvious over Nakamura and Benini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2023). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’270 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’270 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field, with at least two years of relevant experience working with VR [virtual reality] and AR [augmented reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 27 (citing Welch Decl. ¶¶ 88–90, 91). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. 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.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(citing Phillips, 415 F.3d at 1312–17). “[W]hile extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks omitted). We construe expressly only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner contends that “[t]his Petition establishes the prior art meets each of the claim limitation[s] under any reasonable construction,” and, “[t]hus, no express construction is required.” Pet. 27–28. Patent Owner’s Preliminary Response does not contain a separate claim construction section. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. Setting an origin location Limitation 4.a.1 recites, “a first manual input for setting a[n] origin location setting for a location reference for gameplay.” Ex. 1001, 24:44–46. Patent Owner argues that Petitioner has not shown that this limitation disclosed or rendered obvious by the relied-on references. See Prelim. Resp. 29. Petitioner contends that Nakamura teaches the user’s manual selection of a starting point of a game. Pet. 38–40 (citing, inter alia, Welch Decl. ¶¶ 147–148; Ex. 1007 ¶¶ 9, 35–36, Fig. 5); see also id. at 62 (for this Ground 2, referencing the contentions made for Ground 1). Petitioner further contends that “[a] POSITA would have also recognized that the initial position setting provides a location reference for gameplay.” Id. at 63. For this Ground 2, Patent Owner incorporates by reference its arguments regarding Ground 1 based on Cheok, Nakamura, and Foxlin077. See Prelim. Resp. 29. Patent Owner argues that “Nakamura’s position icon 113 [displayed at a virtual location appropriate for the initial position] represents a virtual character’s virtual location in the virtual world, rather than a user’s physical location, and has no relationship to the physical location.” Prelim. Resp. 24 (citing Ex. 1038 ¶¶ 36, 38). According to Patent Owner, “establishing a physical origin location as a location reference is critical to key features of the patented system.” Id. at 25 (citing Section III of the Preliminary Response). Patent Owner’s argument is not commensurate in scope with the language of claim 4, which recites an input for setting “a[n] origin location,” not “a physical origin location.” In support of its arguments, Patent Owner relies on the Specification, stating, for example, that “[t]he ’270 patent’s system ‘prompt[s] a user to” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,967,270 - PTAB · Oct 15, 2025 · IPR2025-00703 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1, 4, 11, 16, 30, and 102 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Cheok and Foxlin077.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. As an initial matter, the claim does not recite “a bounded physical play space.” Rather, the claim recites “a physical playfield.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or similar field, with at least two years of relevant experience working with VR [Virtual Reality] and AR [Augmented Reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Welch ¶95; see also ¶¶94. Pet. 17. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. 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.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“references’ teachings. Prelim. Resp. 36–38. Patent Owner specifically argues that “[t]here is no motivation to modify Cheok’s method for allegedly determining the direction of gameplay to include a prompt requesting a manually provided direction; it already allegedly determines direction by the user’s simple movement, which the user will already do while playing the game, a much more efficient process.” Id. at 36 (citing Pet., 29–36). According to Patent Owner, “[a]dding a prompt requesting manual user input for a direction of gameplay has drawbacks to user experience; it slows down the beginning of gameplay and complicates the overall system, removing the natural feel of playing without having to set up the game, when Cheok already works for its intended purpose.” Id. at 36–37. We do not find these arguments persuasive at this stage. Even if Patent Owner is correct that the proposed combination would be less efficient or slow down the beginning of play, that there may be drawbacks from the proffered combination of teachings does not necessarily show a lack of motivation to combine teachings. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). And, even if the proposed combination would not have been the best choice, that does not necessarily mean that it was non-obvious. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Dr. Welch testifies, for example, that “[a] POSITA would have . . . recognized it would be beneficial to improve the Cheok system by implementing a similar inertial sensor initialization/reinitialization process [as in Foxlin077] to address any potential accuracy or user experience issues associated with drift.” Welch Decl. ¶ 156. Dr. Welch also testifies that, “in a virtual environment application like the Cheok system, in which a user must interact with the real environment, a POSITA would have understood that Foxlin077’s manual reinitialization process would be beneficial to address accumulated drift when an automatic drift compensator component is not sufficiently removing drift.” Id. ¶ 157. At this stage, that testimony is unrebutted with evidence, as opposed to mere attorney argument.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2023). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’821 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’821 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,033,821 - PTAB · Oct 15, 2025 · IPR2025-00743 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR of claims 1, 8, 16, and 18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 8, 16, and 18 of the ’716 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this record, we agree with Petitioner that Claim 16 does not require the virtual object to be displayed and controlled simultaneously. We highlight that claims 1, 14, 16, and 18 use the word “simultaneously” when requiring certain actions to occur at the same time. The fact that patentee used the word “simultaneously” to require certain claimed actions to occur at the same time, but did not use the word “simultaneously” in the claim term “a virtual object is operable to be displayed . . . and controlled” indicates that the patentee did not intend that the actions of displaying the virtual object and controlling of the virtual object are required to occur simultaneously. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (“Differences among claims can also be a useful guide in understanding the meaning of particular claim terms.”). Further, the Specification discloses that a user can manually purge an unseen virtual email located in a virtual trash can, which shows that in at least this embodiment, the user can manually control a virtual object while the virtual object is not being displayed. Patent Owner’s contention that the user is telling the virtual trash can to act does not address the fact that the user’s manual input controls the unseen virtual email by purging the unseen virtual email from the virtual trash can. This embodiment of purging an unseen virtual object further indicates that the scope of this claim term does not require displaying the virtual object and controlling the virtual object simultaneously. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We do not construe “wherein a first virtual object is operable to be displayed on said head-mounted display and controlled with manual input,” as recited in claim 16, to require controlling the virtual object “while it is being displayed,” as proposed by Patent Owner.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. . . . A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The ’716 patent “relates to improved portable devices” such as head-mounted displays. Ex. 1001, 1:30, Fig. 9. Ronzani “relates generally to systems and methods for mounting display . . . systems to the human body” such as head-mounted displays. Ex. 1003 ¶ 5. Ohshima “relates to a game apparatus” such as a head-mounted display. Ex. 1005, 1:9, 5:34–36, Fig. 4. We are sufficiently persuaded that Ronzani, Ohshima, and the ’716 patent are from the same field of endeavor of head-mounted displays. Also, the ’716 patent discloses a camera that addresses the problem of providing video information “of the environment in the user’s field of vision” (Ex. 1001, 14:53–64), which is the same problem addressed by Ohshima’s camera (Ex. 1005, 6:48–49; 7:24–25, 7:64–65, Figs. 4, 5, 8, 9, 11). We are sufficiently persuaded that Ronzani and Ohshima are analogous to the ’716 patent, and that a person of ordinary skill would have had sufficient basis to turn to both Ronzani and Ohshima.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ronzani and Ohshima. Petitioner relies on Ronzani to teach a head-mounted display device for entertainment applications that display virtual images. Pet. 40 (citing Ex. 1003 ¶¶ 2, 5, 170). Petitioner relies on Ohshima to teach implementation details of a specific entertainment application that displays virtual images. Id. at 40–41. Petitioner contends that a person of ordinary skill in the art would have modified Ronzani’s head-mounted display device to include Ohshima’s virtual reality game for the benefit of achieving Ronzani’s goal of entertainment. Id. (citing Ex. 2:33–38, 6:57–59, 11:22– 26, 11:66–12:2; Ex. 1002 ¶ 135). Petitioner also contends that applying Ohshima’s technique of playing a game using a head-mounted display device to Ronzani’s head-mounted display device would improve Ronzani’s head-mounted display device in the same way. Pet. 41–42. We are sufficiently persuaded that a person of ordinary skill in the art would have used Ronzani’s head-mounted device to run Ohshima’s virtual reality game for the benefit of providing the user of the device with entertainment. We are also sufficiently persuaded that the combination of Ronzani and Ohshima “simply arranges old elements [of a head-mounted display device and a virtual reality game] with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,947,716 - PTAB · Oct 15, 2025 · IPR2025-00744 · APJ Ken B Barrett · IPR · Institution
Instituted inter partes review of claims 21, 23, 31, 37, 41, and 42 on all asserted grounds after finding a reasonable likelihood that claim 21 is obvious over Fager and Martins.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’791 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’791 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. Pet. 4 (citing Cooperstock Decl. ¶¶ 21–25). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. 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.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he prior art cited herein . . . renders the challenged claims obvious under any reasonable construction,” and “Petitioner therefore respectfully submits that, for purposes of this IPR, express constructions are not required.” Pet. 7. Patent Owner contends that “no express claim construction is necessary for the purposes of this Preliminary Response,” and “[t]he challenged claims should be given their plain and ordinary meaning, consistent with the specification and as understood by a person of ordinary skill in the art.” Prelim. Resp. 7. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“It is our understanding that Petitioner’s obviousness theory merely relies on Martins’ teaching of using camera images to detect a surface of physical objects. See Pet. 21 (“It would have been obvious to a person of ordinary skill in the art to combine Martins’ teachings regarding using camera images to detect a surface of a physical object with Fager’s augmented reality and head-mounted display system.” (citing Cooperstock Decl. ¶ 84). The proposed resulting combination is “using the camera of Fager’s head-mounted display to capture images used to detecting physical surfaces of a play area, such as the floor, ceiling, and walls of a room in which a user wishes to play a game of, for example, virtual tennis.” Id. at 21–22 (citing Cooperstock Decl. ¶ 84). According to Petitioner, the combination would use images to detect wall surfaces, and that it would have been obvious “to apply the same functionality to detect the surfaces of other objects in Fager’s game, such as the ‘suspended lamp’ described in Fager and other objects, given that Fager’s system models the behavior and movement of virtual objects (such as a ‘fictitious ball’) based on the determined surfaces of real-world objects.” Id. at 22 (citing Ex. 1003 ¶¶ 80, 83, 85). Petitioner contends, inter alia, that the proposed combination would have been obvious as “the combination of prior art elements, with no change in their respective functions, according to known methods—i.e., simply using the camera of the user’s head-mounted display for performing surface detection in connection with modeling the user’s physical environment.” Id. at 21 (citing Cooperstock Decl. ¶ 84). Petitioner also contends that Fager provides a motivation in explaining that its system is primarily applied indoors, where there are surfaces such as floors, ceilings, and walls, and that physical objects may be incorporated into game play. Id. at 22–23. Petitioner’s contentions are supported by the testimony of Dr. Cooperstock, which, at this stage, is unrebutted. We determine that Petitioner has shown adequately for purposes of institution that a person of ordinary skill in the art would have had a motivation to make the proposed combination and that the proposed combination would result in the claimed subject matter.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,019,791 - PTAB · Oct 8, 2025 · IPR2025-00739 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 3, and 6–8 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Jaszlics and Rallison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 8, 13, and 20 of the ’277 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 4. Patent Owner at this stage does not challenge Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. See Ex. 1001, 2:37–41, 2:61–67, 3:21–23, 8:50–64. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:56–58), which indicates that the applicant intended “a physical playfield” as claimed to encompass more than a defined or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 11:12–14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Even if we were to accept Patent Owner’s unsupported contention that the location of Jaszlics’s image processor is outside of the display device, this would result in only two identified, predictable locations of the image processor. The image processor would either be located outside of the display device or inside of the display device. We are persuaded that substituting Rallison’s location of inside the display device instead of outside the display device provides sufficient reason to combine the teachings of Jaszlics and Rallison. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339–40 (Fed. Cir. 2020) (reversing the Board’s determination of lack of motivation “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and plotting locations, it would have been obvious to substitute server-side plotting for terminal-side plotting in a combination of Okubo and Konishi”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,179,277
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.