- Yealink (USA) Network Technology Co., Ltd. / Yealink Network Technology Co., Ltd. v. Barco NVNo claims unpatentablePTAB · Oct 5, 2026 · IPR2025-00598 · APJ David C Mckone · IPR · Final written decision
Claims 1–31 were not shown unpatentable under either § 103 ground because the asserted combinations did not teach required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“admissions by Patent Owner in litigation, contends that a person of ordinary skill in the art would have had “a Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field” and that “[a]dditional educational experience could substitute for some of the work experience.” Pet. 5 (citing Ex. 1002 ¶¶ 36–37). “Patent Owner does not dispute Petitioner’s proposed level of skill in the art (Petition, 5) at this time.” PO Resp. 6. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is uncontested and is consistent with the technology described in the ’347 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Preliminary Response, “Patent Owner accept[ed] the Petition’s claim construction.” Prelim. Resp. 6. However, in the Patent Owner Response, Patent Owner argues that “the claims of the ’347 Patent require no construction as they are valid under their plain and ordinary meaning.” PO Resp. 6. Based on the complete record, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Beel actually discloses the following: [0321] On the peripheral device 32 the video packets are received at the corresponding plug and play port, e.g. the USB port 11, read by the Human Interface Driver (HID) interface handler 13, unpacked to remove HID protocol headers in an unpacker 20 and then transmitted to the communications network by a transmitter 21. The network can be wireless for example WiFi or LiFi network. [0322] Having been routed over a communications network to the base unit 33, the incoming stream is read from the communications interface such as a WiFi access point 22, unpacked in an unpacker 25, decoded in a decoder 26 and then inserted into a suitable composition such as an OpenGL based composition in the compositor 29 for display on a central display device. Ex. 1005 ¶¶ 321–322 (emphasis added to portions quoted by Petitioner). Patent Owner notes that “[t]he Petition mistakenly cites to ¶ 322 of Beel but quotes ¶ 321.” PO Resp. 20 n.3. However, it appears that Petitioner has grafted together a portion of paragraph 321 that introduces peripheral device 32 with a portion of paragraph 322, which discusses features of base unit 33. However, this grafting has been done in such a way as to convey (incorrectly) that peripheral device 32, not base unit 33, includes unpacker 25, decoder 26, and compositor 29 that process the first processed video data received by the first peripheral device to generate second video data. Dr. Almeroth’s testimony, which copies Petitioner’s incorrectly altered quotation to paragraph 322 of Beel, is unreliable as to this claim limitation and is entitled to no weight.4 Thus, Petitioner has no expert testimony on which to rely for this claim limitation.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“5 At the oral argument, when challenged on its reliance on paragraph 322, Petitioner argued that paragraph 321 of Beel teaches this limitation. Tr. 22:26–23:24. Petitioner did not make this argument in the Petition and, instead, raised it for the first time during oral argument; thus, it will not be considered. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). Even if we were to consider this new argument, it would not be persuasive. As Patent Owner observes (PO Resp. 20), any processing performed by peripheral device 32 in paragraph 321 is on data received from the processing device and destined for the base station via the network, rather than data flowing in the direction of the first processed video data of claim 1.” slip op. at 22
Patent outcomesUS 11,966,347 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,966,347 - Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.No claims unpatentablePTAB · Apr 16, 2024 · IPR2023-00052 · APJ Jeffrey N Fredman · IPR · Final written decision
The Board held claims 1–4, 8–14, and 18–26 not shown unpatentable because they were entitled to priority before the November 2018 Venclexta Label, which therefore was not prior art.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology, which would encompass the blood cancers recited in the claims. Neither party identifies a difference in the analysis or conclusions that would be based on differences in the ordinary skill in the art analysis. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See 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 a 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not identify any issue relating to the preamble that would impact our analysis. We recognize that Patent Owner is suggesting that Petitioner’s expert, at least, is reading the word “clinical” into the treatment language of claim 1. However, the plain language of the claim 1 preamble states “treating lymphoma or leukemia in a human patient” and is supported by a straightforward definition in the Specification of the ’087 patent, expressly limiting the invention to treatment of human patients. See Ex. 1001, 16:25–38. We therefore find that the preamble terms do not need claim construction because there is no actual dispute suggesting that, for example, claim 1 implicitly recites the term “clinical.” See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 5
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledEntitled to earlier dateDecided for patent owner
“d. Analysis Considering the Wands factors as a whole, we find that the limited breadth of the claims, presence of several working examples, significant amount of direction and guidance provided by the ’087 patent, predictability in treating blood cancers with Bcl-2 inhibitors like GDC-0199, and high level of skill in the art are balanced against a large quantity of experimentation. Based on our consideration of the entirety of the evidence, we find that a preponderance of the evidence supports the conclusion that undue experimentation would not have been required to make and use the invention commensurate in scope with the claims of the ’087 patent. One underlying theme of Petitioner’s contentions and Petitioner’s expert testimony is the repeated contention that clinical trials were not completed by Patent Owner. See, e.g., Pet. 48 (“venetoclax (GDC-0199) was not FDA-approved”); Ex. 1020 ¶ 193. We find these arguments unpersuasive as we agree with Patent Owner that “[i]t is well established that a patent may be secured, and typically is secured, before the conclusion of clinical trials.” In re Montgomery, 67 F.3d 1375, 1382 (Fed. Cir. 2012). Particularly as to the dependent claims, a preponderance of the evidence of record does not support a finding that undue experimentation would have been required to administer three different doses of GDC-0199 starting with 100 mg, to use multiple daily dosing cycles of one day, to continue until disease progression occurs, or to combine with other treatment compounds. We find that a preponderance of the evidence does not support Petitioner’s position that any of the dependent claims fail to comply with the enablement requirement.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Applying Rai and Wertheim to the instant facts, we agree with Patent Owner that, factually and legally, in the ’087 patent “the claimed dosages of 100 mg, 200 mg, and/or 400 mg of GDC-0199 are adequately supported.” PO Second Suppl. Brief 2 (citing PO Resp. 11, 27–29; PO Sur-reply 19, 21– 22; Ex. 1001, 24:20–29.) In particular, the ’087 patent describes all three specific dosage values 100 mg, 200 mg, and 400 mg in the context of an escalating drug dosage series and Petitioner points to no persuasive statements in the specification that dispute either the effectiveness or the operability of GDC-0199 at any of these dosages.” slip op. at 32
Patent outcomesUS 11,110,087 not shown unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,110,087 - Sony Group Corp. (Japan) / Sony Corp. Of America et al. v. MZ Audio Sciences, LLCNo claims unpatentablePTAB · Apr 8, 2024 · IPR2022-01544 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–10 were not shown unpatentable because Petitioner did not establish sufficient reasons to combine the references in any of the three obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a related field with coursework in signal processing, plus two years of academic and/or industry experience in signal processing or a related field. More education could substitute for experience, and vice versa.” Pet. 7. “Patent Owner does not dispute Petitioners’ definition of a [person of ordinary skill in the art].” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art, other references of record, and the ’961 patent specification.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Petitioner relies on the plain and ordinary meaning and contends that it is unnecessary to construe any claim terms explicitly. See Pet. 8 (citing 37 C.F.R. §42.100(b)). Patent Owner “agrees with Petitioner that, for purposes of this Response only, all terms of the ᾽961 patent have their plain and ordinary meaning.” PO Resp. 23. As Petitioner contends, it is not necessary Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Dr. Scordilis. Based on the record, Petitioner fails to provide a sufficient reason to arrive at the claimed invention and satisfy the burden of showing obviousness. As Patent Owner essentially argues, Cabot (and all references relied upon by Petitioner and Dr. Scordilis) do not pertain to “quantizing a phase difference of the at least one overtone relative to the fundamental tone to embed at least one bit of the data to be embedded” as step 1C-2 requires. See PO Resp. 32–33. Petitioner also relies on Kudumakis to modify Srinivasan in asserting that step 1C-2 would have been obvious, but Petitioner’s reliance on Kudumakis is also faulty as explained below. See Pet. 22–27 (relying on Ex. 1006 (Cabot), Ex. 1007 (Kudumakis); Ex. 1028 (Risset), Ex. 1031 (Lipshitz), Ex. 1055 (“Cox-SSSW”); Ex. 1020 (“Cox- 1995” ); Ex. 1021 (“Wu”)). articulated reasoning with some rational underpinning” to show that one of ordinary skill in the art would have had a sufficient reason to modify Srinivasan’s frequencies to embed a quantized phase difference between a fundamental and its harmonic into the harmonic as step 1C-2 requires. See Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (“teachings of references can be combined only if there is some suggestion or incentive to do so”) (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). As noted above, Dr. Scordilis states that Cabot merely “opens the venue for exploration” for an artisan of ordinary skill to “try to . . . explore” watermarks. Ex. 2011, 75:16–22. Dr. Scordolis’s testimony relates to an “obvious to try” rationale, but neither Dr. Scordilis’s testimony, nor Petitioner’s showing, satisfies the conditions to support that rationale. In particular, Dr. Scordilis does not testify, and Petitioner does not show, that the technique of embedding phase difference codes into a harmonic relative to its fundamental was one of “a finite number of identified, predictable solutions” and a “known option[]” for hiding data. Cf. KSR, 550 U.S. at 402 (indicating that under an “obvious to try” rationale, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp” (emphasis added)).” slip op. at 25
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The record supports Patent Owner’s characterization of Dr Scordilis’s testimony. Dr. Scordilis does not rely on any references that “have a frequencies specifically.” See Ex. 2011, 90:4–8 (testifying such references are “[n]ot in [his] report”). Moreover, Dr. Scordilis testifies that “[t]he value . . . of Cabot’s work is that he points to the fact that even in this very controlled experiment, although phase is detectable in an A/B type of setup under many, many repetitions, it really opens the venue for exploration that a [person of ordinary skill in the art] would try to capitalize and explore further to develop a watermark.” Id. at 75:16–22 (emphasis added). In summary, Dr. Scordilis testifies that no references (including Cabot) cited in his declaration discuss phase encoding of a harmonic phase relative to a fundamental phase for watermarking, and Cabot merely opens the door so that a person of ordinary skill in the art would “try to . . . explore further to develop a watermark” using harmonic phase coding data. Id.” slip op. at 24
Patent outcomesUS 7,289,961 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,289,961 - Ebates Performance Marketing, Inc. D/B/A Rakuten Rewards v. International Business Machines Corp.No claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00438 · APJ Ken B Barrett · IPR · Final written decision
Claims 14–28 were not shown unpatentable because the petition did not establish that the asserted combination taught interactive execution of the ordering and annotation function.
RulingsFinal written decision- Expert testimonyOther
“annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in computer science or a related field, plus at least one year of experience in the design and/or implementation of computerized information retrieval technology,” and that “[a]dditional education in the field of computer science may serve as a substitute for experience in the field.” Pet. 8 (citing Ex. 1003 ¶ 29). Patent Owner states that, “[f]or purposes of this proceeding, [Patent Owner] adopts Petitioner’s 4 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. proposed level of ordinary skill in the art.” PO Resp. 21 (citing Ex. 2011 ¶¶ 30–35). 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). We apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“wherein the ordering and annotation function is executed interactively at the time of each user query” contains two requirements: 1) how the function is executed (“interactively”) and when the function is executed (“at the time of each user query”). Petitioner, in effect, reads out of the claim the “interactively” requirement. Petitioner offers no persuasive reason as to why that is correct. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). Petitioner, for its proposed claim construction of a single requirement, primarily relies on the Specification’s statement that “the ordering and Annotation step 345 is executed interactively, e.g., at the time of every user query.” Ex. 1001, 8:10–12; see Pet. Reply 12–13 (citing the same for the proposition that “[t]he ’676 patent specification also ties the terms together”); Tr. 16:3–12 (“it’s clear the specification is saying that interactively means at the time of every user query”). Petitioner’s reliance on this statement is misplaced. First, Petitioner agrees that the plain and ordinary meaning of “interactively” means “some sort of interaction with the system,” that the inventor did not utilize its own lexicography to redefine the term “interactively,” and that the Specification does not evidence a disavowal of claim scope. See Tr. 19:4–20. Consistent with that, Petitioner acknowledges that the quoted part of the Specification merely is an example, and is not defining “interactively” as limited to that example. See id. at 19:19–25. Second, Petitioner misreads the Specification as indicating that “at the time of every user query” is an example of “interactively.” See, e.g., id. at 21:25–22:1 (“the way I read this is at the time of every user query is modifying what interactively means”). Rather, the better reading of the Specification’s phrase “executed interactively, e.g., at the time of every user query” is that “at the time of every user query” (as opposed to some other time) is an example of when the function may be interactively executed, not that the two phrases on either side of the “e.g.” are synonymous. slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17
Patent outcomesUS 6,785,676 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,785,676 - Restem, LLC. v. Jadi Cell, LLCNo claims unpatentablePTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64
Patent outcomesUS 9,803,176 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,803,176 - Juniper Networks, Inc. v. Smart Path Connections, LLCNo claims unpatentablePTAB · Jan 19, 2023 · IPR2021-01356 · APJ Jameson Lee · IPR · Final written decision
Claims 1–24 were not shown unpatentable because the asserted combinations failed to account for required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner took no position with respect to the level of ordinary skill in the art. In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill in the art. Inst. Dec. 11. Post institution, Patent Owner does not dispute our adopted level of ordinary skill in the art. Petitioner’s assertion is supported by the testimony of Dr. Lavian. Ex. 1003 ¶¶ 91–100. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, in the absence of a contrary contention by Patent Owner, we continue to adopt Petitioner’s proposed level of ordinary skill in the art, as stated in two alternatives noted above. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the above-quoted limitations of claims 1 and 12 plainly require that only a single copy of each data packet be forwarded to the output ports forming a subset (which according to limitations [1.1] and [12.1] forms a LAG), any position of Petitioner asserting the contrary must be contained in the Petition. 37 C.F.R. § 42.204(b)(3) (“the petition must set forth . . . [h]ow the challenged claim is to be construed.”). If not, Patent Owner is deprived of an adequate opportunity to respond, for example, by relying on expert testimony in a declaration to support its Response. Petitioner’s articulated claim construction position regarding forwarding only a single copy is belated, and no explanation has been provided to justify omission of this claim construction position in the § 42.204(b)(3). Thus, the argument is not entitled to consideration. Even if we do consider Petitioner’s belated claim construction position, it is nonetheless without merit and we are unpersuaded. Petitioner’s contention is based on the doctrine of claim differentiation, which disfavors reading a limitation expressly stated in a dependent claim into a claim from which it depends. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). Specifically, the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim. Id. Here, dependent claims 3 and 14 respectively narrow independent” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For several reasons, we are not persuaded by Petitioner that Borgione forwards only a single copy of a packet via the output ports of Borgione’s LAG as identified by Petitioner. Nowhere in the above-cited portions of Borgione is an indication that no other copy or replicated packet will be forwarded via the output ports of Borgione’s LAG. The above-cited description discusses one forwarding instance but does not represent that there is no other forwarding of a copied or replicated packet. To the contrary, the cited text indicates that other copies or replicated versions would still be forwarded via the output ports of the same LAG. Borgione describes that upon receipt of a packet with a multicast destination address, i.e., a multicast packet, a linking node such as node 110 identifies the network nodes subscribing to the multicast group and replicates the packet. Ex, 1006, 6:14–17. Borgione further states: “The replicated multicast packets can then be forwarded to the identified network nodes [such as node 120].” Id. at 6:17–18. With regard to distributing forwarded copies to balance the traffic load within the LAG, Petitioner cites to the following disclosure of Borgione:” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“First, the articulated motivation to combine is overly general and is disconnected with the circumstances and requirements of Devi. Mazzola discloses an address-translation mechanism using table look-up, as discussed above in Section II.D.3. It makes no mention of and is not concerned with aggregated links, sending a packet to just one port in an aggregated link, or load distribution among the ports in an aggregated link. It makes no distinction between one port and a plurality of ports, as it discloses that the index value retrieved from a table may be associated with either one port or a plurality of ports. Ex. 1007, 9:28–31 (“In response, the LTL translates the received index to a signal that selects a port or a group of ports for receiving the data frame.”). Although Mazzola describes that each port is associated with a unique index value and a VLAN “color” identifier (Ex. 1007, 3:12– 14), Mazzola also describes that “[t]he destination of any frame may be one or more ports” (id. at 6:16–17) and that a port can be a multicast port including a group of ports (id. at 6:20–24). The “efficiency” Mazzola mentions appears to be using a look-up table for address conversion versus not using a look-up table, and has little, if anything, to do with associating an FMID with a port versus associating an FMID with a group of ports or a LAG. Further, with Devi’s disclosure of sending only one packet to a LAG and load balancing among the ports in a LAG (limitation [1.2]), it is uncertain whether table look-up as described in Mazzola would even work in that environment. Petitioner does not address entries have to be revised. The statement of increased efficiency is speculative in the context of Devi. Second, Petitioner has over-simplified the issue with limitation [1.3] and has not adequately explained how Mazzola’s address-translation mechanism would be incorporated into Devi without affecting those portions of Devi relied on by Petitioner to account for limitation [1.2]. It is not adequately explained how Devi would be modified to incorporate teachings from Mazzola. Petitioner does not adequately address whether the proposed combination would impact Devi’s components and functionality that are also relied on by Petitioner. It is unclear why the purported combination would have been successful.” slip op. at 47
Patent outcomesUS 7,697,525 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,697,525 - Intel Corporation v. Koninklijke Philips N.V.No claims unpatentablePTAB · May 12, 2022 · IPR2021-00370 · APJ Scott Raevsky · IPR · Final written decision
Claims 49–54 were not shown unpatentable because Petitioner did not establish a motivation to combine Menezes and Brands-Chaum as proposed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between these two definitions are minor. The main distinction we see is that Patent Owner views a POSA as having specific experience in cryptography and digital rights management, whereas Petitioner views a POSA as having more general experience in software engineering and data communications. Yet there is significant overlap between these definitions because Petitioner also states that a POSA “would have understood the basics of digital communication devices and protocols and how to apply basic cryptographic concepts.” Pet. 19. We are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’809 patent. For example, the ’809 patent refers to the problem of “unauthorized copying and pirating” in the context of “digital rights management (DRM) systems and methods.” Ex. 1001, 1:49, 59–61. Petitioner’s definition of the level of skill omits “digital rights management.” We also note that, according to Mr. Williams, Patent Owner’s proposed level of skill is essentially identical to the level of skill adopted by the ITC in the related ITC investigation:” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for the following three terms: “certificate,” “[provide/providing] the secret to the second device,” and “predetermined time.” Pet. 13–14. Patent Owner does not dispute these constructions. See generally PO Resp. We provided a preliminary construction for “predetermined time” at institution, but as the parties do not dispute this term post-institution. Thus, we need not construe any terms now. Dec. 12; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms 5 Dr. Karp also finds the differences between the parties’ level of skill definitions to be immaterial. In his second declaration, he opined that “[m]y findings in my declaration still hold for a POSA under the ITC’s definition.” Ex. 1015 ¶ 4. that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The problem with the proposed combination is that the express teachings of Brands-Chaum require timing a rapid single bit, and one of ordinary skill in the art would have understood that Menezes’s challenge-response has multiple bits. Patent Owner correctly points out that in Brands- Chaum, “the essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” PO Resp. 21–22 (quoting Ex. 1007, 345) (emphasis added). Not only that, but “each bit of the prover P is to be sent out immediately after receiving a bit from the verifier V.” Id. at 24 (quoting Ex. 1007, 345, 348). Brands-Chaum then repeatedly emphasizes, in each of its five different algorithms, that one device sends a single bit to another device “immediately after he receives” the first bit. Ex. 1007, 347, 348, 349, 350, 356, 357. Brands-Chaum’s repeated italicization of “immediately” underscores the importance to Brands-Chaum of rapidly sending back a single bit right after receiving one. See id.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s argument was a new argument first raised at the hearing. The Reply cites none of the above testimony from Dr. Karp and makes no such argument. Thus, we dismiss this argument as untimely. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). But even if we were to consider it, our opinion would not change because Dr. Karp’s testimony contradicts the express disclosure of Brands-Chaum. See Ex. 2019, 166:8–167:9. As we have repeatedly emphasized, Brands- Chaum requires that “[t]he essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” Ex. 1007, 345 (emphasis added). Dr. Karp cites no evidence for his testimony that in a less harsh environment, multiple bits could be used in place of Brands-Chaum’s single bit. This testimony is entitled to little weight. See 37 C.F.R. § 42.65(a).” slip op. at 28
Patent outcomesUS 9,436,809 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,436,809 - Intel Corporation v. Koninklijke Philips N.V.No claims unpatentablePTAB · May 12, 2022 · IPR2021-00327 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 9–15 were not shown unpatentable because neither proposed combination with Brands-Chaum made the challenged claims obvious.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between these two definitions are minor. The main distinction we see is that Patent Owner views a POSA as having specific experience in cryptography and digital rights management, whereas Petitioner views a POSA as having more general experience in software engineering and data communications. Yet there is significant overlap between these definitions because Petitioner also states that a POSA “would have understood the basics of digital communication devices and protocols and how to apply basic cryptographic concepts.” Pet. 24–25. We are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’809 patent. For example, the ’809 patent refers to the problem of “unauthorized copying and pirating” in the context of “digital rights management (DRM) systems and methods.” Ex. 1001, 1:49, 59–61. Petitioner’s definition of the level of skill omits “digital rights management.” We also note that, according to Mr. Williams, Patent Owner’s proposed level of skill is essentially identical to the level of skill adopted by the ITC in the related ITC investigation:” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the following three terms: “certificate,” “[provide/providing] the secret to the second device,” and “predetermined time.” Pet. 13–14. Patent Owner does not dispute these constructions but does propose a separate construction for the term “secret.” PO Resp. 47–50. We provided a preliminary construction for “predetermined time” at institution, but the parties do not dispute this term post-institution, so we need not construe it now. Dec. 12–13. We also need not construe the term “secret” because we find that Petitioner has not shown the challenged claims to be unpatentable for reasons unrelated to the meaning of “secret.” Thus, we need not construe any terms. See 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.”) (internal quotation omitted).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The problem with the proposed combination is that the express teachings of Brands-Chaum require timing a rapid single bit, and one of ordinary skill in the art would have understood that Menezes’s challenge-response has multiple bits. Patent Owner correctly points out that in Brands-Chaum, “the essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” PO Resp. 22–23 (quoting Ex. 1007, 345) (emphasis added). Not only that, but “each bit of the prover P is to be sent out immediately after receiving a bit from the verifier V.” Id. at 25 (quoting Ex. 1007, 345, 348). Brands-Chaum then repeatedly emphasizes, in each of its five different algorithms, that one device sends a single bit to another device “immediately after he receives” the first bit. Ex. 1007, 347, 348, 349, 350, 356, 357. Brands-Chaum’s repeated italicization of “immediately” underscores the importance to Brands-Chaum of rapidly sending back a single bit right after receiving one. See id.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s argument was a new argument first raised at the hearing. The Reply cites none of the above testimony from Dr. Karp and makes no such argument. Thus, we dismiss this argument as untimely. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). But even if we were to consider it, our opinion would not change because Dr. Karp’s testimony contradicts the express disclosure of Brands-Chaum. See Ex. 2019, 166:8–167:9. As we have repeatedly emphasized, Brands-Chaum requires that “[t]he essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” Ex. 1007, 345 (emphasis added). Dr. Karp cites no evidence for his testimony that in a less harsh environment, multiple bits could be used in place of Brands-Chaum’s single bit. This testimony is entitled to little weight. See 37 C.F.R. § 42.65(a).” slip op. at 27
Patent outcomesUS 9,436,809 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,436,809 - Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentablePTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision
The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See 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 a 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claims 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. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner
“Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16
Patent outcomesUS 10,561,659 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,561,659 - Shure Incorporated v. Clearone, Inc.No claims unpatentablePTAB · Feb 14, 2022 · PGR2020-00079 · APJ David C Mckone · PGR · Final written decision
Claims 1–24 were not shown unpatentable because the petitioner failed to prove the asserted §112 grounds and obviousness grounds by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“As we stated in the Institution Decision (at 30), Petitioner’s proposal is reasonable in light of the descriptions in the ’653 patent and prior art, and is supported by expert testimony. We further find that Patent Owner’s proposed addition, that a skilled artisan would have had experience with digital signal processing, is consistent with the descriptions in the ’653 patent and prior art. Because the parties do not contend that their disagreement over “at least” has any bearing on this proceeding, we need not evaluate whether a skilled artisan might have had more than three years of work experience or whether that would lead to vagueness. Instead, we adopt Petitioner’s proposal, with Patent Owner’s addition, and omit “at least”: A skilled artisan would have possessed: (i) a bachelor’s degree in mechanical engineering, electrical engineering, physics, or acoustical engineering that included coursework on the design of acoustic and/or antenna arrays, phased arrays, and/or beamforming; or (ii) three years of work experience in the field of directional microphone arrays; and the skilled artisan would have had experience with digital signal processing.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner that the claim limitation at issue here specifies a single device that has multiple properties. Rather, claim 1 broadly recites “a ceiling tile combined with the beamforming microphone array.” We agree with Petitioner that the plain language of claim 1 does not require that the entire beamforming microphone array is physically integrated into a single ceiling tile, as combining a ceiling tile and a microphone array is broader than physically installing the microphone array in the ceiling tile. Nor can the language of claim 1 reasonably be read to exclude combining more than one ceiling tile with the microphone array. Where claim 1 assigns specific properties to a ceiling tile, it does so expressly, reciting “the ceiling tile being sized and shaped to be mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles included in the drop ceiling.” Thus, the plain language of claim 1 requires at least one ceiling tile combined in some way with a beamforming microphone array, and each ceiling tile (if there is more than one) is a particular size and shape.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Second, Patent Owner argues that our construction “should reflect the fact the microphones of a [beamforming microphone array] are located in positions relative to each other, by design, to establish constructive interference in one or more preferred beam directions.” PO Resp. 18–19 (citing Ex. 2013 ¶¶ 31–37, 48). Petitioner responds that claim 1 recites “beamforming” broadly and that Patent Owner attempts to limit “beamforming” to one technique out of several, including techniques that determine time delay between microphones rather than knowing the distances between the microphones. Reply 3 (citing Ex. 1029 ¶¶ 11–21). The parties’ competing proposals here are directed to Petitioner’s allegations that CTG System and Levit render the challenged claims obvious. However, as explained below, Petitioner has not established whether CTG System performs beamforming under either proposed construction. Thus, we need not resolve the parties’ claim construction dispute. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 19
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Despite an obligation to identify in the Petition the evidence that supports its indefiniteness allegations,5 Petitioner largely failed to discuss the Specification. Pet. 30; see also Dec. 41 (“Despite enumerating five techniques that it contends exemplify ‘adaptive acoustic processing,’ Petitioner does little to address the description of those techniques in the Specification.”). In one passage cited by Petitioner, the Specification states that an “embodiment of Array 116 may include adaptive acoustic processing that automatically adjusts to the room configuration for the best possible audio pickup.” Ex. 1001, 6:13–16. Petitioner argues that this description “lacks any disclosure providing objective boundaries of the claim’s scope, either through definitions or working examples.” Pet. 30. Petitioner also acknowledges that the Specification “discusses acoustic echo cancellation (in general) as an additional feature from adaptive acoustic processing,” and admits that a skilled artisan “would have recognized that echo cancellation processing occurring automatically in response to a room configuration would be a meaning of adaptive acoustic processing.” Id. at 35 (citing Ex. 1001, 6:5–22). However, Petitioner does not discuss the rest of the Specification in the Petition. Petitioner should have addressed in the Petition the express descriptions of Dr. Vipperman’s enumerated examples of adaptive acoustic processing in the Specification in order to support its 5 Our rules require Petitioner to make its case in the Petition, including identifying “[h]ow the challenged claim is to be construed,” “the specific part of the claim that fails to comply with the statutory grounds raised and . . . how the identified subject matter fails to comply with the statute,” and “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.204(b). Indeed, “[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. at § 42.204(b)(5). otherwise conclusory statement that “[n]one of these techniques are described in the specification,” Pet. 32. If it was Petitioner’s position that these express descriptions were nevertheless not examples of adaptive acoustic processing, Petitioner should have made those arguments in the Petition.” slip op. at 24
Patent outcomesUS 10,728,653 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 10,728,653
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.