• Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Soundclear Technologies LLCAll claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-00565 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–5 are unpatentable because Amazon showed they are anticipated by Shin; the Board did not reach Amazon’s contingent obviousness ground over Shin.

  RulingsFinal written decision

  • BurdenOther

    “Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–5 of the ’337 patent. For the reasons we identify below, we hold that Amazon has demonstrated by a preponderance of the evidence that these claims are unpatentable.” slip op. at 2

  • Skill levelOther

    “2. Level of Skill in the Art In determining whether an invention would have been obvious, we” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 17

  Patent outcomesUS 11,069,337 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,069,337
• Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Technology (Shenzhen) Co., Ltd. And Throughtek Co., Ltd.All claims unpatentable
  PTAB · Dec 15, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Final written decision

  Claims 1–3, 5, 7–13, 15–19, and 23–25 are unpatentable: claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 as anticipated by Zhang; all challenged claims also as obvious over at least one …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 5 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or provide a proposal of its own. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed

    “construction of “feature flag” is inconsistent with the language of claim 8, which states that “the feature flag indicates that the running state of the second apparatus is the sleep state.” Petitioner also argues that Patent Owner’s proposal is not supported by claim 24, which depends from claim 23 and states that “the feature flag is located at a header of the sleep login packet.” Id. at 3. We agree with Petitioner. The plain language of claim 8 states what a feature flag indicates. Claim 24 recites where the feature flag is located. Neither claim suggests any of Patent Owner’s additional limitations.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “[A] prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (alteration by Federal Circuit)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (alteration by Federal Circuit); In re Petering, 301 F.2d 676, 681 (CCPA 1962)). For the reasons explained below, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 are anticipated by Zhang. slip op. at 16

  Patent outcomesUS 10,602,448 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,602,448
• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9

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

    “Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11

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

    “A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26

  Patent outcomesUS 9,427,662 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

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

    “4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23

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

    “predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64

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

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00972 · APJ David C Mckone · IPR · Final written decision

  Claims 1–10 are unpatentable because Speight anticipates them; the Board found Peisa anticipation and Peisa–Heo obviousness unproven for the challenged claims in those grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field, as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 14 (citing Ex. 1004 ¶¶ 47–49). Patent Owner does not contest Petitioner’s contention or propose a level of skill. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “agreement that this claim term should be read as reciting two mutually-exclusive alternatives with respect to the “third parameter.” Dec. 11. The parties do not challenge this construction in the Patent Owner Response, Reply, or Sur-reply. On the complete record, we construe “wherein resources are allocated for data of each channel having a second parameter above zero prior to another channel’s data for transmission having a third parameter less than or equal to zero” as reciting two mutually-exclusive alternatives with respect to the “third parameter.”” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition is required to identify “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Petitioner argued in the Petition that “as properly construed, the claimed ‘first parameter,’ ‘second parameter,’ ‘third parameter,’ and ‘fourth parameter’ are four different parameters.” Pet. 17–18. In the Institution Decision, Petitioner prevailed on that point and “we agree[d] with Petitioner that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels.” Dec. 14. Patent Owner “relie[d] on the Board’s construction ‘that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels,’” and proposed distinct parameters in the Specification that it alleges are examples of second and third parameters, albeit not the same two parameters proposed by Petitioner. PO Resp. 9, 29. Petitioner now proposes new constructions for the second and third parameters that would limit those parameters to the two examples it advanced in the Petition and improperly supports these new constructions with new expert testimony and an exhibit from the prosecution of a later patent. Reply 20–25; Ex. 1040 ¶¶ 20–29; Ex. 1038. See also Consolidated Trial Practice Guide (“TPG”)10 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). As Patent Owner observes (Sur-reply 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 21), it has no opportunity to introduce rebuttal evidence contesting the new constructions. See TPG 73–74 (Nov. 2019) (“The sur-reply may not be accompanied by new evidence other than deposition transcripts of the crossexamination of any reply witness. Sur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.”). We agree with Patent Owner that it would be unfair to consider Petitioner’s new construction. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”). Thus, Petitioner has forfeited its new claim construction arguments and they will not be considered. See TPG 74 (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). Moreover, these arguments would be unpersuasive even if considered. Petitioner has, at most, cited description in the Specification to show that its identified second and third parameters are examples corresponding to the recited second and third parameters. Ex. 1005 ¶¶ 84–95. This description does not define the second and third parameters nor purport to exclude from the claims any parameter that would otherwise meet the language of the claims. The prosecution history to which Petitioner cites, that of a child application, took place after the prosecution of the ’466 patent and thus, does not constitute a definition or disclaimer of subject matter for claims of the ’466 patent. In any case, the brief argument in the cited response to office action, that “[i]n the algorithm, the first value is provided by the wireless network for each of a plurality of buffers where the buffer having the second value above a threshold transmits data first,” does not define the second and third parameters, disavow any values from those parameters, or even discuss the third parameter. Ex. 1038, 12. Petitioner’s extrinsic evidence, Dr. Akl’s testimony, does little more than repeat the arguments in the Reply and, thus, is of little value. Ex. 1040 ¶¶ 20–29. In sum, we maintain our construction that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels. Under this construction, RAAUq” and RAAUq’, respectively, could potentially be second and third parameters, as could RAAUq’ and RAAUq”, respectively, as long as they satisfy the rest of the pertinent language of the challenged claims.” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production, we still would find that a skilled artisan would not have been able to ascertain from the disclosure in the ’421 application that RAAUq’ could take values less than zero. Instead, even if we were to credit Dr. Lomp’s testimony, to conclude that RAAUq’ can take negative values, a skilled artisan would need to program computer software to simulate the ’421 application’s algorithm and correctly choose starting parameters and other context variables without guidance from the description in the ’421 application. This case is similar to that in New Railhead, where the written description was insufficient because “one of ordinary skill in the art must first make the patented invention before he can ascertain the claimed features of that invention.” 298 F.3d at 1295. This case also is similar to Los Angeles Biomedical Research Institute, in which an application’s written description was insufficient because assumptions and starting variables were not knowable from the disclosure in the application. 849 F.3d at 1058. Thus, even if we were to conclude that Patent Owner has met its burden of production, a preponderance of the evidence shows that the ’421 application does not provide written description support for Alternative A. In sum, we conclude that the ’421 application does not provide written description support for the challenged claims and that, therefore, Speight is prior art to the challenged claims.” slip op. at 41

  Patent outcomesUS 9,681,466 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 9,681,466
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  • Skill levelOther

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  Patent outcomesUS 7,631,346 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• PNC Bank, N.A. v. United Services Automobile AssociationAll claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01070 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, 7–10, and 15–17 are unpatentable as obvious over Acharya and Luo.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Relying on Dr. Mowry’s testimony, Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field, and at least two years of prior experience with image processing or scanning 8 The record does not include allegations or evidence of objective indicia of nonobviousness. server,” and that “[a] person with additional education or additional industrial experience could still be of ordinary skill in the art if that additional aspect compensates for a deficit in one of the other aspects of the requirements stated above.” Pet. 19–20 (citing Ex. 1002 ¶ 44). We adopted this level of skill in the Institution Decision. Dec. 38–39. Patent Owner applies this level of skill in its Patent Owner Response. PO Resp. 30. As Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art, we continue to apply this level of skill.” slip op. at 13

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

    “Dr. Mowry testifies that, “[g]iven these difficulties in using handheld devices to capture suitable images, a person of ordinary skill in the art would have been motivated to implement Acharya using the reference lines and capture techniques described in Luo in order to achieve a high likelihood of obtaining images that were suitable for image processing.” Ex. 1002 ¶ 63. According to Dr. Mowry, Luo’s solution is “directly applicable to capturing check images to predictably increase the likelihood of obtaining images that are suitable for” optical character recognition. Id. Dr. Mowry’s testimony is consistent with the express disclosures in Acharya and Luo and, therefore, is credible. Acharya expressly identifies technology that it uses to capture information from documents, namely optical character recognition, and Luo expressly describes a technique designed to reduce projective distortion when capturing an image of a document, such that optical character recognition can be performed more accurately. Dr. Creusere admitted on cross-examination that “correcting geometric distortion will make it easier to perform automatic text recognition.” Ex. 1037, 89:1–2. Petitioner contends that its proposed combination would have amounted to applying a known technique to a known device ready for improvement to yield predictable results. Pet. 32–34; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); Ex. 1002 ¶ 64 (“Implementing Acharya’s RCT using Luo’s camera system would have simply involved applying a technique that was known to a device that was known and ready for improvement, to yield predictable results.”). We agree. This appears to be a textbook example of using a technique that improved one device to improve a similar device in the same way. As we preliminarily observed in the Institution Decision (Dec. 54), a combination of Acharya and Luo would have been no more than “[t]he combination of familiar elements according to known methods” and, thus, likely obvious because it “does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 30

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

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. Gurley, 27 F.3d at 553.” slip op. at 43

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Acharya’s system would have imposed “additional processing overhead and complexity on the customer’s device as compared to the existing manual capture system” and that “[t]his type of processing, especially when done in real-time, was considered computationally-intensive in 2009.” PO Resp. 53 (citing Ex. 2115 ¶ 35). The only evidence Patent Owner offers to support this assertion is the testimony of its expert, who largely copies Patent Owner’s argument and does not identify the basis for the testimony. As such, the testimony is entitled to little 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.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). We note that Luo describes its technique as implemented on conventional computing equipment on portable devices available prior to 2009 without mention of concerns over processing overhead. Ex. 1004, 8. Patent Owner’s evidence is insufficient to establish that concerns over processing overhead would have dissuaded a skilled artisan from pursuing a combination of Acharya and Luo.” slip op. at 44

  Patent outcomesUS 8,699,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,699,779
• Unified Patents Inc. v. American Patents LLCAll claims unpatentable
  PTAB · Aug 3, 2022 · IPR2019-00482 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 5–7 are unpatentable as obvious over the asserted combinations of Coile, Templin, Hu, and Shapiro.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal (unopposed by Patent Owner) is consistent with the ’655 patent specification and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). 7 The record does not include allegations or evidence of objective indicia of nonobviousness. Accordingly, we adopt the level of ordinary skill as articulated by Petitioner. Accord Inst. Dec. 22 (adopting same position).” slip op. at 8

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

    “phrases, but rather assumes that a person of skill in the art would understand their meaning. See Phillips, 415 F.3d at 1313 (“[I]nventors are typically persons skilled in the field of the invention[,] and [] patents are addressed to and intended to be read by others of skill in the pertinent art.”). The Specification states a machine “shares its identity” with a user and “[a]s a 8 Although Patent Owner addressed claim construction at the oral hearing (see generally Tr. 42:20–56:15), Patent Owner did not do so in its briefs (see PO Resp. 12–13 n.5). The oral hearing arguments were untimely and will not be considered. See Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 85–86, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Paper 28 at 7 (Scheduling Order) (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”); see also Tr. 88:5–15 (Petitioner objecting to new arguments). consequence, the authorized user assumes the identity of the machine and appears to the network as if it were that machine.” Ex. 1001, 2:31–34. “[T]he end user assumes the identity of the [machine] such that the connected end user has all of the access privileges assigned to the [machine].” Id. at 3:19–21. The Specification implies that multiple users can assume the identity of the same machine (id. at 2:34–36), and the Specification explains “the network resources do not worry about the true identity of the end user” after the user assumes the identity of the machine (id. at 4:33–34). Dr. Reddy testifies that, “[b]ased on this disclosure, a [person of ordinary skill in the art] would have understood the phrases ‘assume the identity’ of a machine and ‘assuming the identity’ of a machine to include at least ‘appear[ing] to the network as if it were’ that machine.” Ex. 1003 ¶¶ 46–47 (last alteration in original). On this record, we credit the testimony of Dr. Reddy because it is consistent with and supported by the Specification. Accordingly, we conclude the claimed phrase “assume the identity of a network element” means “appear to the network as if it were the network element,” and similarly, we conclude “assuming the identity of a network element” means “appearing to the network as if it were the network element.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “a. Independent Claim 5 Claim 5 recites “[a] method comprising . . . .” Ex. 1001, 5:30. We conclude that this preamble is not limiting. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”). But, even if the preamble were limiting, Petitioner has shown that Coile discloses a method, as recited. Pet. 15 (citing Ex. 1004, 1:16–17).” slip op. at 19

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

    “on the server via a proxy after successfully authenticating with the proxy. E.g., Ex. 1004, 1:36–47, 2:16–38, 2:44–49. According to Dr. Reddy, a person skilled in the art would have understood Coile’s client to use the proxy’s authorization to access these network resources. Ex. 1003 ¶ 77. In addition, Templin teaches that host A communicates with host C using gateway B and its address. Ex. 1005, 8:37–54. Templin’s host C “believ[es] it is communicating with a ‘host’” and “never learns of the existence of host A.” Id. at 8:44–46. Dr. Reddy explains that Templin teaches that host A “assume[s] the identity” of gateway B, as required by claim 5, because host A appears to the network (including, for example, host C) as if it were gateway B. Ex. 1003 ¶¶ 78–82; see supra § II.B.3 (construing “assume the identity of a network element” to mean “appear to the network as if it were the network element”). Patent Owner has not identified any evidence that contradicts this testimony, and we find Dr. Reddy’s testimony to be credible. Further, Patent Owner has not identified any deficiencies in Petitioner’s rationale. Accordingly, we are persuaded that the combination of Coile and Templin discloses these limitations. Finally, Petitioner asserts that a person of ordinary skill in the art would have been motivated to combine these references as proposed (Pet. 25–26), and Patent Owner has not argued otherwise. Dr. Reddy testifies that a person of ordinary skill in the art would have been motivated to combine the identified portions of Coile and Templin to yield the claimed invention, and Dr. Reddy explains the facts and rationale on which this testimony is based. Ex. 1003 ¶¶ 83–86. We find Dr. Reddy’s testimony to be credible, and we perceive no evidence that contradicts this testimony. Further, Petitioner’s rationale for combining the teachings of Coile and Templin is logical, consistent with, and supported by the cited evidence. Accordingly, we are persuaded that a person of ordinary skill in the art would have been motivated to combine Coile and Templin as proposed by Petitioner. For the foregoing reasons, Petitioner has proved by a preponderance of the evidence that claim 5 would have been obvious over Coile and Templin.” slip op. at 25

  Patent outcomesUS 7,373,655 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,373,655
• Koninklijke Philips N.V. / Philips North America LLC v. Fitbit, LLCAll claims unpatentable
  PTAB · Jul 21, 2022 · IPR2021-00494 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–8, 10, 11, 13, 16, 17, 19–24, 27, and 33–36 are unpatentable as obvious over the Theriault-based grounds; the Jacobsen-based grounds were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals are similar, excepting Petitioner’s additional point regarding collaboration with other skilled artisans. The level of ordinary skill in this case is not dispositive of any challenge. We determine that Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art, and we apply Petitioner’s articulation. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 10

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

    “Petitioner submits that the claim 1 requirement, “storing facts about at least one of the actor and the environment,” should be construed to require “storing facts about the actor and storing facts about the environment.” Pet. 10. Petitioner relies on In Simo Holdings Inc. v. H.K. uCloudlink Network Tech., Ltd., 2021 U.S. App. LEXIS 137, at *15–16 (Fed. Cir. 2021) (stating the “general grammatical principle” for interpreting a claim which recites “at least one of X and Y” as requiring at least one of X and at least one of Y (instead of at least one of X or at least one of Y)). Id. Patent Owner disagrees with this interpretation, but “for the purpose of this Response, PO analyzes Petitioners’ proposed mappings based on this interpretation.” PO Resp. 2. Accordingly, we apply Petitioner’s proposed construction.4 D.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “claim 1. Even if the threshold values and audio profiles are not specifically tailored to an individual or a particular environment, they are nonetheless facts about individuals and environments that are used to assess whether an alarm condition exists for the particular individual and environment being monitored, and thus are properly regarded as “facts about at least one of the actor and the environment.” Contrary to Patent Owner’s argument, the second and third limitations of the claim complement each other, whether or not the stored facts are unique to the current actor or environment. Moreover, Patent Owner provides no basis for its assumption that monitoring an actor’s diabetic condition involves stored facts, such as symptomatic blood sugar levels, that are specific to the individual as opposed to broadly-based criteria applicable to diabetic patients in general. Patent Owner’s expert’s testimony on this point is conclusory and unsupported. Sarrafzadeh Decl. ¶ 44; Reply 12–13.” slip op. at 17

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

    “Petitioner argues that one of ordinary skill would have been motivated to adopt in the monitoring system of Theriault the features in Mault regarding alerting different people depending on received sensor data, given that both references are directed to providing alerts based on the remote monitoring of a person, and given the apparent advantages of issuing pages to different remote persons based upon a monitored condition as taught by Mault. Pet. 44–46 (citing Young Decl. ¶¶ 115–120). Claim 11 depends from claim 1, and additionally requires “formulating a response plan for responding to the at least one emergency situation.” Ex. 1001, 12:60–62. Claim 13 depends from claim 11, and additionally requires “wherein formulating the response plan includes selecting at least one responder from a plurality of designated responders.” Ex. 1001, 12:65–67. Petitioner relies on the disclosure in Mault of sending alerts to different people (e.g., caregiver, physician, etc.) depending upon whether the sensed data falls within different ranges. Pet. 46–47 (citing Ex. 1006 ¶¶ 43, 66; Young Decl. ¶¶ 119–120, 285, 287–288). We are persuaded that it is reasonable to characterize selecting different persons to notify, depending on different sensor values, such as different temperature ranges, as an example of formulating a response plan. Moreover, Petitioner has articulated sufficient reasoning with rational underpinning supporting why one of ordinary skill would have been motivated to incorporate the pertinent features of Mault into the system of Theriault. Patent Owner does not address this ground challenging claims 11 and 13. Accordingly, upon review of the record, we determine that Petitioner has proved by a preponderance of the evidence that claims 11 and 13 would have been obvious over the combination of Theriault and Mault. F.” slip op. at 36

  Patent outcomesUS 7,145,462 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,145,462

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.