• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Visa, Inc. v. Cortex MCP, Inc.No claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because the Petition did not establish the claimed second OVER file over Oborne or a sufficient basis to combine Stafford and Purves.

  RulingsFinal written decision

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

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 9–13 (referring to the ’854 patent Specification, the language of claim 1, and Dr. Shamos’s testimony). However, we did not determine whether an “OVER file” included “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file,” because it was not necessary for purposes of Institution. Id. Moreover, we determined that Petitioner had made a sufficient showing that Oborne’s tokens qualified as “OVER files.” Id. at 11, 24–31. Patent Owner argues that no construction is required, but, regardless, “the claims may be confirmed under the Board’s construction.” PO Resp. 11; Sur-reply 1. Petitioner also does not dispute our preliminary construction. Reply 1. In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Reply 1–2 (citing PO Resp. 49–50). “For example,” Petitioner asserts, “verification in subsequent claim elements involves the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things, as PO’s expert admits.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “In its Response, Patent Owner stated that it “agrees in substance with the Board’s construction” of this term, and clarified its understanding of that construction as requiring that “the issuing agency has verified the ‘virtual representation’ (and not the ‘credential’) to be ‘a first official representation of the original credential.’” PO Resp. 11–12. In its Reply, Petitioner points to Patent Owner’s reliance on an example in the ’854 patent Specification involving the checking of a driver’s license identification number against a DMV database to show verification of information in an OVER File generation request. Reply 2 (citing PO Resp. 14–16; Ex. 1002, 6:35–39, 6:54–65). Based on this portion of the Patent Owner Response, as well as portions of Dr. Malek’s deposition, Petitioner argues that Patent Owner “admits that a virtual representation of the credential may be ‘verified by an issuing agency’ by checking credential data against an issuing agency database.” Id. (citing Ex. 1047, 37:24–41:1, 41:2–22). In its Sur-reply, Patent Owner argues that Petitioner misinterprets its discussion of the DMV example, and contends that what Patent Owner was actually arguing based on that example is that the “credential” (the “OVER file”) is verified, not that “credential data” is verified. PO Sur-reply 1–3. After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of a credential.” Inst. Dec. 15–16. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “agrees with [Petitioner’s proposed] definition of the level of ordinary skill in the art.” PO Resp. 10 (citing Ex. 2009 ¶¶ 37–41). In the Institution Decision, we found Petitioner’s proposed level of ordinary skill in the art to be reasonable and consistent with the problems and solutions disclosed in the prior art of record. Inst. Dec. 8. Given that Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, we continue to apply Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Although we agree with Petitioner that Oborne teaches that “‘device fingerprinting may be utilized’ to provide ‘additional security’ for use of Oborne’s tokens,” Pet. 34 (citing Ex. 1011 ¶ 26 (emphasis added)), we do not agree with Petitioner’s arguments related to “device fingerprinting.” Petitioner also relies on testimony from Dr. Shamos to support its position. However, Dr. Shamos’s cited testimony in paragraph 239 merely repeats what is stated in the Petition, does not provide citation to any other evidence of record, and does not provide any further explanation as to why one of ordinary skill would have been motivated to use device fingerprinting to tie a given token to a given device such that the token for the second device would be invalid in the first device. Ex. 1005 ¶ 239. Dr. Shamos refers to Oborne’s disclosures on “digital fingerprinting” and a client’s MAC address in the token data structure. Id. (citing Ex. 1011 ¶¶ 26, 47). We have considered Petitioner’s arguments in light of Oborne’s disclosure, but find Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for a second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. Id. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of” slip op. at 24

  Patent outcomesUS 9,954,854 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,954,854
• Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentable
  PTAB · Dec 10, 2024 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–5 were not shown unpatentable on any asserted obviousness ground because the evidence did not establish the claimed data-path delay circuit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 9

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

    “1[e], together with limitation 1[f], and note that we are not performing claim construction of a specific claim term or phrase per se. Claim 1 of the ’608 patent recites that “each respective buffer circuit including a data path corresponding to each data signal line in the respective set of data/strobe signal lines” [limitation 1[e]] and “wherein the data path corresponding to the each data signal line includes” . . . “a delay circuit configured to delay a signal through the data path by an amount . . . ” [limitation 1[f]]. Ex. 1001, 19:36–55 (emphasis added). The operative issue is the identification of the “data path” that is claimed in claim 1. The claim differentiates between data signal lines and strobe signal lines. Limitation 1[e] identifies that “a data path” corresponds to the data signal line in the set of data/strobe signal lines; that is, it is a data path that is in the data signal line. The data path claimed, therefore, is not in a strobe signal line of the set of data/strobe signal lines. Limitation 1[f] confirms this understanding, reciting “the data path,” (with the antecedent of “a data path” of limitation 1[e]), that corresponds to each data signal line, and which includes a delay circuit that delays a signal through the data path. Patent Owner refers to Figures 3, 4A, and 4B of the ’608 patent, which confirms this understanding of the language of claim 1 in that it provides written description support for the reading of the explicit language of claim 1. See PO Sur-reply 1–2. These figures, as well as their associated descriptions, support that there are different transmission lines (data paths) with a separate signal transmission line for transmitting/receiving data signals and a separate strobe line for transmitting/transmitting strobe signals. See Ex. 1001, 10:31–11:8, 11:20– 45, Figs. 3, 4A–4B, see also id. code (57) (identifying that the “data path” corresponds with the data signal line in the set of data/strobe signal lines).” slip op. at 16

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

    “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC, 54 F.4th at 1381 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (emphasis added)). The issues in this proceeding and those at issue in the -00236 IPR are not identical. The claims of the ’035 patent and the instant ’608 patent are different. Claim 1 of the ’035 patent recites “each respective buffer circuit including data paths for transmitting respective data and strobe signals associated with the first memory operation and logic configured to respond to the module control signals by enabling the data paths,” “wherein the logic is further configured to obtain timing information based on one or more signals . . . to control timing of the respective data and strobe signals on the data paths.” Ex. 1031, 19:35– 45. Claim 1 of the ’035 patent explicitly recites that the data paths have data and strobe signals transmitted on them. That is unlike claim 1 of the ’608 patent at issue here—claim 1 of the ’035 patent does not recite that the “data path” is “corresponding to each data signal line in the respective set of data/strobe signal lines,” as claim 1 of the ’608 patent does.” slip op. at 20

  • Strike new argumentNew argument consideredGranted in part

    “response, but may not raise “in reply, ‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) (quoting Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017)).” slip op. at 45

  Patent outcomesUS 10,268,608 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,268,608
• Apple Inc. v. LBT IP I LLCNo claims unpatentable
  PTAB · Dec 15, 2023 · IPR2020-01189 · APJ John A Hudalla · IPR · Remand

  Claims 8, 10, 13, and 15 were not shown unpatentable because Sakamoto discloses only two battery power thresholds, which do not meet the construed multitude limitation.

  RulingsRemand decision

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

    “threshold values” includes GPS signal level thresholds, we start with the words of claim 8. Claim 8 recites a “battery power level monitor” that (1) “measures a power level of the charging unit” and (2) “adjusts a power level applied to location tracking circuitry responsive to one or more signal levels.” Claim 8 further recites that “the power level compris[es] a multitude of threshold values determined by a user or system administrator.” The remainder of claim 8 states the purpose of the “multitude of threshold values,” which is “to intermittently activate or deactivate the location tracking circuitry to conserve power of the charging unit in response to the estimated charge level of the charging unit.” The natural reading of these recitations is that the “power level” associated with the “multitude of threshold values” is the battery power level that is (1) measured by the battery power level monitor and (2) adjusted by the battery power level monitor and applied to location tracking circuitry. We also note that the claim language already incorporates a limitation directed to “signal levels” insofar as the battery power level monitor “adjusts a power level applied to location tracking circuitry responsive to one or more signal levels” (emphasis added). As such, the limitation “one or more signal levels” is recited separately from the limitation “the power level comprising a multitude of threshold values.” Given “[t]he general presumption that different terms have different meanings,” Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012), we ascribe different meanings to the recited “signal levels” and “power level.”” slip op. at 15

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

    “the battery power thresholds between (1) high and normal sensitivity positioning modes and (2) normal sensitivity positioning mode and turning off power to the GPS receiver) and Sakamoto’s two GPS signal level thresholds (i.e., K1 and K2) for teaching “the power level comprising a multitude of threshold values.” Pet. 50–51; Pet. Reply 16–18. As discussed above, however, “the power level comprising a multitude of threshold values” refers to battery power level thresholds. See supra § II.C.2. We also determine above that signal level threshold values are not within the scope of “the power level comprising a multitude of threshold values.” See id. Accordingly, we are not persuaded that Sakamoto’s GPS signal level thresholds K1 and K2 teach the recited power level threshold values. Although Petitioner is correct that “Sakamoto uses the same modes with both sets of thresholds” and that both sets of thresholds might ultimately relate to conserving battery power (see Pet. Reply 17 (citing Ex. 1003 ¶ 58; Ex. 1004 ¶¶ 27–29)), we are not persuaded that these different types of thresholds are interchangeable within the scope of “the power level comprising a multitude of threshold values.” This is particularly true given that Petitioner already relies on Sakamoto’s GPS signal level thresholds K1 and K2 for teaching another aspect of claim 8, i.e., “responsive to one or more signal levels.” See Pet. 49–50. For these reasons, Petitioner has only established that Sakamoto teaches two battery power level thresholds within the scope of “the power level comprising a multitude of threshold values.” Because two threshold values are not a “multitude” (see supra § II.C.1), we find that Petitioner has not established that Sakamoto teaches “the power level comprising a multitude of threshold values,” as recited in claim 8. Thus, we determine Petitioner has not shown by a preponderance of the evidence that the subject matter of claim 8 would have been obvious over Sakamoto. 3. Claims 10, 13, and 15 Claims 10, 13, and 15 each depend from claim 8. Ex. 1001, 17:4–10, 17:23–25, 17:29–33. Petitioner’s analysis for these claims does not cure the deficiencies discussed above with respect to claim 8. See Pet. 54–55. Thus, we determine Petitioner has not shown by a preponderance of the evidence that the subject matter of claims 10, 13, and 15 would have been obvious over Sakamoto.” slip op. at 31

  • BurdenNot shown unpatentable

    “III. CONCLUSION Petitioner has not shown, by a preponderance of the evidence, that (1) the subject matter of claims 8, 10, 13, and 15 would have been obvious over Sakamoto; (2) the subject matter of claims 8, 10, 13, and 15 would have been obvious over the combination of Sakamoto and AAPA; or (3) the subject matter of claims 8, 10, 13, and 15 would have been obvious over the combination of Sakamoto and Hayasaka.” slip op. at 33

  Patent outcomesUS 8,497,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,497,774
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00315 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the Petition did not establish that Keely and Geva teach the touch-sensitive display plane or provide sufficient reasoning to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of non-obviousness into the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

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

    “federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that paragraph 75 of Dr. Bederson’s original Declaration that his testimony “show[s] how Keely’s touch-sensitive plane can be used as Geva’s planar element” (Ex. 1002 ¶ 75 (emphasis added)) is consistent with Patent Owner’s position that the proposed combination in the Petition does not include Geva’s planar element 14. We find that Dr. Bederson’s testimony that “[p]erhaps I could have been more precise by using the word ‘with’ in place of ‘as’ in this sentence, since that is what Geva itself teaches and what I relied on in forming my opinions” (Ex. 1044 ¶ 13) is not a clarification of his initial testimony, but, instead, is a clear revision of his testimony and his opinion. Dr. Bederson’s testimony regarding “using the word ‘with’ in place of ‘as’” (id.) is improper new testimony in his Reply Declaration. Furthermore, Dr. Bederson’s testimony that his new opinion is supported by “what Geva itself teaches” (id.) is not consistent with Geva’s teachings. Geva does not refer to Keely’s LCD or any LCD similar to that in Keely with a digitizer grid, but instead, Geva describes “[a]dvantageously, the position-determining input device does not require a specific, active board with in-built sensors for determining positions.” Ex. 1011, 3:7–9. which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Here, Dr. Bederson’s original Declaration (Ex. 1002) does not disclose facts or data showing a reliance on Geva’s planar element 14 or any LCD other than the LCD described in Keely, which incorporates by reference the hardware of Keely II.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “After consideration of the assertions and the evidence of record based on the complete record now before us, we determine that Petitioner has not shown that the combination of Keely and Geva teaches element 1[B]. Accordingly, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Keely and Geva.” slip op. at 40

  Patent outcomesUS 10,664,070 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,664,070
• Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentable
  PTAB · May 3, 2023 · IPR2022-00063 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–34 were not shown unpatentable under § 103(a) because Petitioner did not establish motivation to divide Jeddeloh’s self-test functionality across Ellsberry’s Control ASIC and Switch ASICs.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Paper 13, 14. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art, and Dr. Brogioli testifies that “I accept this proposed level of ordinary skill in the art.” PO Resp. 6; see Ex. 2004 ¶ 22. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

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

    “We agree with Patent Owner that it is not necessary to provide an express interpretation of any terms for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “The record supports that the proposed modifications were informed by the requirements of the claims. The fact that a person of ordinary skill in the art “could” make these changes does not inform us that a person of ordinary skill in the art “would” make these changes. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”); see ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert's testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias.”). As discussed by Patent Owner, Dr. Subramanian conceded that there were multiple ways a person of ordinary skill in the art could add selftesting to Ellsberry. See PO Resp. 57 (citing Ex. 2004 ¶¶ 46, 47, 128, 129, 146; Ex. 2005, 121–125). For example, a person of ordinary skill in the art could have incorporated all of Jeddeloh’s self-test logic into Ellsberry’s Control ASIC or duplicated Jeddeloh’s self-test logic into Ellsberry’s Switch ASICs. See Ex. 2004 ¶ 129; Ex. 2005, 121–125, 184–185. Dr. Brogioli credibly testifies that these alternative designs would have been more similar to what was seen in the prior art. Ex. 2004 ¶¶ 46, 47, 128, 129, 146. Accordingly, the record supports that Petitioner’s specific modifications were driven by hindsight view of the roadmap provided by the claim limitations, e.g., the testing data and address/control logic is separated between the data module and the control module (limitations 1[e], 1[g][i], 1[g][ii], 1[g][ii]).” slip op. at 48

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “combination, but Dr. Subramanian’s testimony is unavailing because it essentially repeats what is stated in the Petition, and states that Ellsberry and Jeddeloh “employ known signaling and testing techniques found in many prior art systems,” and combining Ellsberry and Jeddeloh “would therefore have been well within a Skilled Artisans’s abilities, would not have resulted in any unpredictable results and could have been readily accomplished without undue experimentation and with a reasonable expectation of success.” Pet. 32 (citing Ex. 1003 ¶¶ 146–147). We find this testimony to be conclusory, at a minimum, particularly in light of the relatively low level of skill in the art advanced by Petitioner. Further, as discussed below, Dr. Subramanian’s testimony is misguided. We find more persuasive Patent Owner’s contentions that “[p]ortions of Jeddeloh’s self-test module cannot be disassembled and distributed across Ellsberry’s memory module as proposed by Petitioner without creating new pathways or changing how existing components work, which creates timing issues and issues synchronizing the various signals sent to and received from the memory devices.” PO Resp. 62–63 (citing Ex. 2004 ¶ 83). For example, Dr. Brogioli explains that “two new circuits have been created using components disclosed in Jeddeloh and deployed to a distributed, and markedly different architecture than Jeddeloh. Not only are new pathways required within Ellsberry’s architecture that are not contemplated by Jeddeloh, but these pathways in some instances require being bidirectional.” Ex. 2004 ¶ 83. We find this testimony credible, given the nature and extent of the modifications proposed by Petitioner.” slip op. at 39

  Patent outcomesUS 10,217,523 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,217,523
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jan 13, 2023 · IPR2021-01257 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 were not shown unpatentable over Newton or Reime, alone or with Hinckley, because the references did not teach element 1[b].

  RulingsFinal written decision

  • ExcludeOther

    “A. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude certain of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) arguing that the testimony is irrelevant and has little probative value. Mot 1. In particular, Patent Owner 3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, and was effective on March 16, 2013. Because the challenged claims of the ’170 patent have an apparent effective filing date before March 16, 2013, we refer to the pre-AIA version of 35 U.S.C. § 103. 4 The Petition lists “Ground 3 and 4” as obviousness over Reime and Hinckley (Pet. 3, 46–60 (emphasis omitted)), and Ground 3 appears to be obviousness over Reime alone. Id. at 58. We treat the omission of the explicit obviousness identification of Reime “alone” as a typographical error. and 21 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument against Patent Owner’s proposed claim constructions (Mot. 1–2); and (2) paragraphs 28, 31, 34, 36, 37, 43, 45, 47, 49, 50–52, 60, and 62 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument for Petitioner’s Grounds 1–4 (Mot. 2–3). Patent Owner relies on the Federal Rules of Evidence (“FRE” or “Fed. R. Evid.”) 401 through 403 as legal support for its arguments that the identified paragraphs are inadmissible. See generally Mot. In its Opposition, Petitioner provides a table including the testimony in each contested paragraph, along with citations to the record set forth in that testimony, and the corresponding argument in Patent Owner’s Response that the testimony responds to. Opp’n 2–7. Petitioner argues, in contrast to Patent Owner’s arguments, Dr. Bederson’s testimony directly responds to arguments in Patent Owner’s Response and, therefore, is highly relevant and probative of the issues raised by Patent Owner. Id. at 1, 8. Petitioner also argues that Dr. Bederson’s testimony “is replete with citations to the record” and is “well-supported” proper expert testimony. Id. (citing Fed. R. Evid. 702–704; Consolidated Trial Practice Guide (“TPG”)5). Petitioner argues that the probative value of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) is not outweighed by any unfair prejudice or confusion. Opp’n 8. Petitioner argues that Patent Owner’s arguments in that regard are conclusory and unsupported. Id. at 7–8.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “We find that for the most part Petitioner’s proposed definition is the better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal. technical field, and the asserted prior art, we agree therefore with Patent Owner’s addition of “physics” in its proposed qualifications of the educational level for a person having an ordinary level of skill and we otherwise agree with Petitioner’s proposed qualifications, except without the “at least” language. Based on the complete record now before us, the level of skill that we adopt is set forth immediately below. One of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. We find that the definition set forth above is consistent with the level of skill reflected in the specification of the ’170 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis and conclusions herein, however, do not turn on whether we adopt Petitioner’s proposed qualifications, Patent Owner’s proposed qualifications, or the qualifications set forth immediately above.” slip op. at 11

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Based on the complete record now before us, we conclude that our preliminary determination in our Decision to Institute adopting Petitioner’s implicit construction of “impingement of an electromagnetic radiation spot” was not correct. Based on the complete record now before us, for the reasons given below, as urged by Patent Owner in its Response (Resp. 8–15), we adopt the same constructions adopted by the District Court, including that “impingement of an electromagnetic radiation spot” should be construed as “an area of reflected or projected radiation.” Because the constructions that we adopt do not differ from that adopted by the District Court and because Patent Owner urged adoption of those constructions in its Patent Owner Response with detailed substantive argument and explanations, Petitioner has had notice and a full opportunity to respond. Indeed, Petitioner has provided responsive argument disputing Patent Owner’s claim constructions prior art reference meets the limitations under Patent Owner’s proposed constructions. Reply 1–5, 22–23. We have considered the arguments and evidence by both parties in the complete record now before us in making our final determinations herein.” slip op. at 17

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

    “For the reasons given with respect to claim construction (see supra § II.D.2), we conclude that “impingement of an electromagnetic radiation spot” means “an area of reflected or projected radiation,” which is the same as the claim construction provided by the District Court. See Ex. 1034, 4. For the longer claim recital that includes additional language, as well as the same cited phrase, we conclude that the “plain and ordinary meaning” should apply to the remaining language, which is the same as the construction provided by the District Court. See Ex. 1034, 4. We agree with Patent Owner (Resp. 32) that Newton’s teachings relied on by Petitioner describe an object interrupting an energy beam above an exterior surface of a protective barrier as well as a finger touching or contacting the surface)), but Newton does not teach “an output indicative of an impingement of an electromagnetic radiation spot on at least one of the at interactive surface element” recited in claim 1. See, e.g., Ex. 1012, Figs. 2, 3, 6, ¶¶ 13, 25, 48. After consideration of the contentions and the evidence of record, we determine that Petitioner has not shown that either Newton alone or the combination of Newton and Hinckley teaches element 1[b] of claim 1. Accordingly, based on the complete record now before us, we conclude that Petitioner has not established by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Newton alone or with Hinckley.” slip op. at 37

  Patent outcomesUS 9,317,170 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,317,170
• Polycom, Inc. v. Directpacket Research, Inc.No claims unpatentable
  PTAB · Aug 26, 2022 · IPR2019-01233 · APJ Sheila F Mcshane · IPR · Remand

  Claims 1–23 were not shown unpatentable over Ress or Ress and Doyle because the cited art did not teach receiving a multimedia data stream that includes media.

  RulingsRemand decision

  • RemandOther

    “Having analyzed the record in view of our reviewing court’s directive, we determine on remand, for the reasons that follow, that Petitioner has not shown by a preponderance of the evidence that claims 1–23 of the ’588 patent are unpatentable.” slip op. at 3

  • BurdenNot shown unpatentable

    “protocols for media stream communications (Pet. 24; Ex. 1004, 1:20–24), but the operative issue as to limitation1[a] is whether Ress teaches that a multimedia data stream, including media, is received at the communication controller (call server). We have reviewed the evidence and argument provided by Petitioner during trial, and we agree with Patent Owner that Petitioner fails to demonstrate that Ress teaches or suggests this limitation. PO Resp. 18–19. The evidence supports Patent Owner’s contention, referencing annotated Figure 3 reproduced below, that “Ress illustrates a ‘packetized media stream’ (in blue) communicated between gateways is not associated with the signaling messages (in red) communicated to the call server” and “[t]he ‘packetized media stream’ notably never reaches the call server 300 of Ress.” Id. at 14, 19.” slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We determine that Petitioner presents new evidence and arguments post-appeal, which is impermissible. In its Opening Brief On Remand, Petitioner refers to multiple portions of Ress which had not been cited in either the Petition or Petitioner’s Reply. See Pet. Rem. Br. 1–6 (citing Ex. 1004, 5:62–65, 4:35–42, 7:49–53, 11:62–65, 12:3–9, 4:36–38, 12:6–12, 13:54–59, 12:25–29, 12:31–33, 18:21–24, 18:51–52, 19:6–12). Petitioner also refers to evidence that was cited in Petition and Reply but was not previously relied upon for any assertions related to any transmission of media to the call server in Ress. Id. (citing Ex. 1004, 6:16–19, 10:45–49, 18:11–14, 12:13–17, 12:18–21, Figs. 7, 12–19).” slip op. at 19

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

    “protocols for media stream communications (Pet. 24; Ex. 1004, 1:20–24), but the operative issue as to limitation1[a] is whether Ress teaches that a multimedia data stream, including media, is received at the communication controller (call server). We have reviewed the evidence and argument provided by Petitioner during trial, and we agree with Patent Owner that Petitioner fails to demonstrate that Ress teaches or suggests this limitation. PO Resp. 18–19. The evidence supports Patent Owner’s contention, referencing annotated Figure 3 reproduced below, that “Ress illustrates a ‘packetized media stream’ (in blue) communicated between gateways is not associated with the signaling messages (in red) communicated to the call server” and “[t]he ‘packetized media stream’ notably never reaches the call server 300 of Ress.” Id. at 14, 19.” slip op. at 16

  Patent outcomesUS 7,773,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,773,588
• Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7

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

    “Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12

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

    “Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14

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

    “generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35

  Patent outcomesUS 6,154,844 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 6,154,844
• Uber Technologies, Inc. v. X One, Inc.No claims unpatentable
  PTAB · Oct 12, 2018 · IPR2017-01264 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 4–11, 13, 22–25, 27, 28, 31–37, 39–42, and 45 were not shown unpatentable because the asserted obviousness grounds failed to establish the required link to application startup.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We have reviewed Dr. Bartone’s testimony, and we find his references to the front end and signal receiving elements were intended to denote that a person of ordinary skill’s understanding should include an understanding of the elements’ use at a system level in mobile wireless communications and navigation systems, but the ordinarily skilled artisan need not “have detailed understandings of every single aspect and every single system.” See Ex. 2007, 48:17–19, see also id. at 46:15–49:6. Under Dr. Bartone’s testimony, a person of ordinary skill in the art would not be required to have an understanding of, for instance, the details of the design of user applications or antenna except as required for an understanding of how these elements work within the mobile wireless communications and navigation systems. See id. Additionally, under our review of Petitioner’s proposed qualifications, we decline to adopt the qualifier “at least,” because the use of this qualifier introduces vagueness. Accordingly, on this record, we adopt the qualifications that a person of ordinary skill would have a fouryear degree in electrical engineering, computer science, or a related field of study, or equivalent experience, and two years of experience in or with mobile wireless communications and navigation systems, and this would include an understanding of how system elements work within mobile wireless communications and navigation systems. II. CLAIM CONSTRUCTION A. Introduction” slip op. at 9

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

    “We find that, in light of the specification and the plain meaning of the term, launching is not equivalent to running an application. See Ex. 2004 ¶ 37 (Mr. Sturza’s testimony citing dictionaries in support of his statement that “[o]ne of ordinary skill in the art would have understood that the ordinary meaning of ‘launching’ is during a program’s start up procedures”). The specification does not use these terms interchangeably; instead, launching refers to the initiation or startup of an application. See e.g., id at Fig 32 (first step in the flow chart is launching the application on a handset); 26:51–59 (describing Figure 32 as depicting the process by which a user can initiate joining a talk group); see also id at Figs 34–40 (depicting launching as the initial step). Thus, the claims require the recited activities to be “responsive to” or “in association with” the startup of the application. Patent Owner’s counsel asserts that the claims require some connectivity between launching the application and displaying the map. Tr. 26:21–27:4. Specifically, “there needs to be a connection either in time or by operation” between the launching of the application and the invocation of the recited method. Id. at 27:5–7. As noted above, the district court found that “‘[r]esponsive to launching’ simply places a temporal relationship on launching and the other claimed functions: they happen in response to launching. ‘In association with an application launched’ is broader, and just requires some relationship between launching and the claimed functions.” Ex. 2006, 39. We agree, but in the interest of providing more specificity, we clarify that the required temporal relationship with the claimed activities is one that requires the claimed functions to occur during or near the time of startup of the application. We provide this clarification because we have determined that the temporal relationship must be anchored to the startup of the application or else the term “launch” loses its meaning. The required relationship is not shown by simply pointing out that the application was started at some point in time prior to the occurrence of the recited activities. Finding otherwise would render meaningless the distinction between launching and running an application because the specification and plain meaning of the term indicate that launching is the startup of the application and running indicates the continued operation of that application. We are charged with giving the claim terms their broadest reasonable interpretation in light of the specification and that charge includes respecting the patentee’s specific word choice and giving that choice the appropriate meaning and emphasis. Therefore, we find that the plain meaning of “responsive to launching” requires that there be a temporal relationship between the startup of the recited application and the occurrence of the other recited activities and “associated with launch” is a broader term that requires a relationship between the startup of application and the recited activities. III. ANALYSIS A. Analysis of Asserted Ground of Obviousness Based on Konishi” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “This evidence, however, falls short of what is required under our construction of “responsive to launching.” See supra § II.B. Petitioner has established that an application is running on the mobile device and, thus, the application was launched at some point in time prior to the recited mapping activities. Petitioner, however, fails to provide sufficient evidence that one of ordinary skill in the art would have found it obvious to invoke the method responsive to the startup of the application. As described above, it is not enough to show that the application was launched, but rather there must be a showing as to the temporal relationship between the launch of the application and the recited method. This limitation is not met by merely showing that the application was launched at some point in time because we must give proper weight to a patentee’s choice to link the invocation of the method to the launch of the application and not to the running of the application. Thus, the evidence presented in this matter indicates that Konishi teaches that an application is launched, but the evidence fails to provide the necessary connection between Konishi’s application startup and method invocation.” slip op. at 21

  • ExcludeMotion to exclude, deniedMixed

    “any alleged deficiencies were remedied when Petitioner filed Exhibits 1029, 1030, and 1032, which are declarations of the translators for translated documents, Exhibits 1009, 1012, and 1015.11 Additionally, the declarations in Exhibits 1029, 1030, and 1032 contain statements that willful false statements are punishable by fine and imprisonment. See e.g., Ex. 1029. Accordingly, we deny Patent Owner’s motion to exclude the translations of 11 We granted Petitioner’s motion to file the supplemental declarations, in part, because the information in the supplemental declarations “constitutes additional support that allegedly confirms the accuracy of translations of prior art” and the filing could “obviate the need for filing additional authenticating documents in the future.” See Paper 20, 5. prior art references, Makoto, Konishi, and Mitsuoka (Exs. 1009, 1012, and 1015), their untranslated versions (Exs. 1008, 1011, and 1014), and associated declarations in support of the translations (Exs. 1010, 1013, and 1016). B. Exhibits 1005–1007, 1020, and 1022” slip op. at 37

  Patent outcomesUS 8,798,647 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,798,647

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.