• Abbott Laboratories v. Miracor Medical SANo claims unpatentable
  PTAB · Jun 11, 2026 · IPR2025-00116 · APJ John D Hamann · IPR · Final written decision

  The Board held claims 1–5, 7, 10, 16–24, 26, and 28 not unpatentable under any of the four § 103 grounds because the petition failed to prove required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that the ’077 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’077 patent is consistent with the definition of one of ordinary skill in the art proposed by Petitioner, which we adopt. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We further find that our determinations in this Decision would be the same if we were to instead adopt the level of skill proposed by Patent Owner.” slip op. at 11

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

    “We agree with Patent Owner that “axially adjacent” should be given its plain and ordinary meaning of “adjacent to one another as measured along a central axis.” PO Resp. 5–6; see also Ex. 2015 ¶¶ 73–79 (Mr. Leschinsky addressing the claim term “axially adjacent” and explaining that a person of ordinary skill would have understood it to mean that the “first magnetic device and the rotor are ‘adjacent’ to one another, i.e., disposed next to one another, as measured along the central axis about which the rotor spins”). Patent Owner’s construction also is supported by Petitioner’s expert, Mr. Crosby, who agrees that “adjacent to one another as measured along a central axis,” could be “one meaning,” along with “many other meanings.” Ex. 2014,8 19:13–20:11. In sum, consistent with our Institution Decision, we conclude that the plain and ordinary meaning of “axially adjacent” is “at a position adjacent to one another as measured along a central axis.” See Dec. on Inst. 12.” slip op. at 14

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

    “Second, for the reasons below, we determine that we do not need to construe any other claim terms to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe” slip op. at 14

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

    “We agree with Patent Owner. As we discuss above, we find “axially adjacent” to mean “adjacent to one another as measured along a central arguments that rest on Petitioner’s assertion that in the Parallel Litigation, Patent Owner “asserts that a magnetic element sealed within a rotor is . . . ‘axially adjacent.’” Id. at 20–21, n.6 (citing Ex. 1019, 5–7). In particular, we find unavailing Petitioner’s argument that Wampler teaches that magnetic pieces 88 (“a first magnetic device”) “are inserted [‘axially adjacent’] in…the impeller.” Id. at 20–21 (citing Ex. 1008 ¶ 80, Fig. 13; Ex. 1003 ¶ 174). We also find unavailing Petitioner’s reliance on Wampler’s Figure 13 and Mr. Crosby’s cited testimony that “the ‘impeller’ and ‘magnetic pieces’ are axially adjacent—situated next to each other on the same axis.” Id. at 21–22 (annotating Ex. 1008, Fig. 13; citing Ex. 1003 ¶¶ 174–176). Petitioner does not sufficiently explain this argument, but appears to conflate being adjacent along a central axis with about an axis. Id. We also find unavailing Petitioner’s argument that under Patent Owner’s construction, Wampler also teaches this limitation, because Patent Owner “concedes that ‘axially adjacent’ components ‘have positioning that is next to one another, perhaps touching or sharing a common side, when measured along the axis.’” Pet. Reply 14–15 (citing PO Resp. 14). Petitioner mischaracterizes Patent Owner’s arguments and ignores Patent Owner’s showing that “axially adjacent” components are “distinct from components that are aligned with one another such that they overlap or occupy the same portion of an axis upon which they are positioned.” PO Resp. 14 (citing Ex. 2015 ¶ 78). For the preceding reasons, Petitioner fails to show by a” slip op. at 24

  Patent outcomesUS 11,754,077 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,754,077
• 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
• Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …

  RulingsFinal written decision

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

    “image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the complete record, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11

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

    “We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27

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

    “Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31

  Patent outcomesUS 7,314,167 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,314,167
• AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision

  The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18

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

    “We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19

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

    “(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26

  Patent outcomesUS 10,841,958 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,841,958
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7

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

    “Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8

  • BurdenNot shown unpatentable

    “On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11

  Patent outcomesUS 7,629,634 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,629,634
• Peloton Interactive, Inc. v. NEC CorporationNo claims unpatentable
  PTAB · Mar 3, 2025 · IPR2023-01239 · APJ Michael J Strauss · IPR · Final written decision

  Claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 were not determined unpatentable because the asserted obviousness grounds failed to establish the claimed code-rate determination.

  RulingsFinal written decision

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

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by the testimony of Dr. Reader, argues that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree, or equivalent, in electrical engineering, computer science, a related field, and 2–3 years’ experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 14 (citing Ex. 1006 ¶¶ 67–69). Petitioner further argues “[o]ne having less education but more practical experience, or more education and less experience, might also meet this standard.” Id. Patent Owner does not dispute Petitioner’s definition or offer an alternative level or skill in the art. PO Resp. 12 (citing Pet. 14; Ex. 2012). Instead, “[f]or the purposes of this PO Response only, Patent Owner applies Petitioner’s definition of POSITA.” Id. Thus, on this record, the parties agree upon the proposed level of ordinary skill in the art, and this level is consistent with our review and understanding of the technology and descriptions in the ’101 patent and the prior art references that disclose content delivery systems. For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11

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

    “the gap between the playback deadline and the target schedule, (td(n) − tT(n)), is the target buffer duration, i.e., ‘the desired client buffer duration (in client time).’” Id. at 22–23 (quoting Chou ¶ 74). Petitioner also argues that “in efforts to match upper bound tb(n) to target schedule tT(n), Chou takes into consideration the time duration between target schedule tT(n) and the playback deadline td(n).” Thus, it appears Petitioner assembles three separate and distinct time intervals from Chou’s timing diagrams and equations to construct one contiguous time interval equivalent to claim 1’s remaining time. However, Chou does not recognize the time interval that Petitioner posits, and Petitioner has not persuasively shown that this combined time interval exists as a teaching in the prior art and is used as part of any step or decision involved in determining the code rate. As admitted by Petitioner’s expert, Dr. Reader, Petitioner’s analysis “used the claims as a road map to find limitations in the prior art.” Ex. 2015, 76:4–9 (Reader Deposition Transcript). See also Tr. 28:20–31:2 (Petitioner’s response to whether identification of and integration of separate time ranges described by Chou is hindsight reconstruction, Petitioner argues Chou’s device operates such that code rate is based on remaining time). Under the circumstances, this is improper because Petitioner and Dr. Reader do not justify this combination of separately identified time ranges except based solely on hindsight reconstruction of the claimed invention. However, even if that were not the case, we are not persuaded that Chou or the other asserted prior art references suggest using the combined time interval td(n) − ta(n) as the basis for any decision related to determining the code rate.” slip op. at 37

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

    “d) Analysis In our Institution Decision, although expressing some uncertainty with respect to certain of Patent Owner’s arguments on the preliminary record then before us, “we [were] not persuaded by Petitioner’s contentions that [(1)] Wang teaches [1d]’s code rate” (Dec. 53 (citing Pet. 62–65) or (2) “a POSITA would have been motivated to combine the teachings of Chou and Wang” (id. at 54 (citing Pet. 74)). Petitioner does not dispute those determinations in its Reply or otherwise. Furthermore, Petitioner does not address or otherwise dispute Patent Owner’s arguments challenging the asserted obviousness of claims 1, 4–6, 10–16, and 19–26 over the combined teachings of Chou and Wang. Thus, for at least the reasons set forth in our Institution Decision, we agree with Patent Owner that Petitioner fails to show that (1) one skilled in the art would have combined the teachings of Chou and Wang or (2) the combined teaching of Chou and Wang renders limitation 1(d) obvious. e) Conclusion Regarding Claim 1 For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that independent claim 1 is unpatentable over the combination of Chou and Wang.” slip op. at 47

  Patent outcomesUS 8,752,101 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,752,101
• Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentable
  PTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9

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

    “Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally 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. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute before us. 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 10

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

    “Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36

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

    “Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36

  Patent outcomesUS 9,118,602 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,118,602
• Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10

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

    “43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19

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

    “Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39

  Patent outcomesUS 10,713,366 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,713,366
• Cisco Systems, Inc. v. Corrigent CorporationNo claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00447 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1–26 were not shown unpatentable because the Petition did not establish the claimed port assignment and packet labeling under Raz or adequately explain the Raz–Ferguson combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1004 ¶ 57). Patent Owner “uses the same definition.” PO Resp. 4. We apply Petitioner’s level of ordinary skill, which is undisputed and is consistent with the level reflected by the ’602 patent and the asserted prior art.” slip op. at 6

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

    “We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally 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. Neither party proposes any express claim constructions. Pet. 6–7; see PO Resp. 4. To the extent that the parties dispute the meaning of certain claim terms, we address those issues below, but we determine it is unnecessary to expressly construe any terms. 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 6

  • BurdenNot shown unpatentable

    “Patent Owner argues, and we agree, that the cited portions of Raz do not disclose a LAG between two switches. PO Resp. 8–9. Petitioner acknowledges this; as stated in Petitioner’s Reply, “Petitioner has always acknowledged that Raz addresses the use of subports within an LSR, but a [person of ordinary skill in the art] would have found it obvious from Raz to use Ethernet physical data ports of a router or switch in an Ethernet LAG to communicate high-speed packet streams in [an] MPLS network.” Pet. Reply 2 (citing Pet. 15, 19, 22–25; Ex. 1021 ¶ 13; Ex. 1006, 1:16–19, 2:23– 31, 7:7–29, 11:3–12, 13:16–19, 14:42–44, 15:56–58, 17:7–9). Petitioner argues that LAGs were well known and, “[w]hile PO argues that Raz teaches the use of a single high-speed link to communicate between LSRs, that is merely a design choice.” Pet. Reply 3 (citing Ex. 1021 ¶¶ 15–17; PO Resp. 8–9). Further, Petitioner argues “[i]t would have been obvious to a [person of ordinary skill in the art] that high-speed packet streams could be communicated between switches or routers through a physical tunnel port of a LAG.” Pet. Resp. 3 (citing Ex. 1021 ¶¶ 15–17) (emphasis added). Among other problems, though, those arguments were not in the Petition; the Petition does not describe modifications of Raz’s teachings, much less establish those modifications as a “design choice.” See Pet. 25; see also PO Sur-reply 3. Further, we agree with Patent Owner that Raz is fundamentally different with its teachings of multiplexing the outputs of multiple slow- speed subports/processors into a single stream for transmission across a single high-speed link. PO Resp. 7–9, 12–13, 15–16; PO Sur-reply 4–5. As stated in Raz, “[t]he present invention provides a subport forwarding and provisioning mechanism whereby a plurality of subports comprising slower speed processors are used to perform the packet processing for a higher speed packet stream.” Ex. 1006, 6:24–27. Additionally, where Raz describes communication between two LSRs, Petitioner acknowledges that Raz teaches that its cited second LSR assigns the port on which it will receive a data packet. Pet. Reply 4; Ex. 1021 ¶ 20 (“in Raz, the second LSR chooses the subport that will be used to transmit the data packet from the first LSR and receive the data packet at the second LSR”). According to Petitioner, Raz teaches that “a first LSR generates a data packet label in which a port serial number is encoded and sends the label to a preceding LSR. Subsequently, the preceding LSR sends a data packet to the proper subport for processing. The process is then repeated in sending the data packet from the first LSR to a second LSR.” Pet. Reply 4 (citations omitted). “This technique just as easily could have been implemented to identify a single physical tunnel port through which a data packet in a first router or switch would be communicated to a second router or switch via a LAG.” Pet. Reply 4 (emphasis added) (citing Ex. 1006, 2:23–25, 7:7–16, 7:22–26, 11:3–29, Fig. 5; Ex. 1021 ¶ 18). Again, these arguments were not made in the Petition (see Pet. 22–25), and Petitioner’s assertions that Raz’s teachings “just as easily could have been implemented” in the manner claimed is improper hindsight and inconsistent with the fundamental differences between Raz’s multiplexing within an LSR and the claimed link aggregation and port assignment between MPLS/LAG switches.” slip op. at 8

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

    “[c]laims 1–13, 15–24 and 26 set forth above in Ground 1.” Pet. 52. Further, Petitioner states that “[f]or independent [c]laims 1, 15, and 26, Ferguson builds on the previous analysis of Raz by disclosing a system for communicating packets between switches and routers in an MPLS network.” Pet. 52; see Pet. 52–55. Critically, though, Petitioner does not specifically explain how the combined teachings of Raz and Ferguson would satisfy individual claim elements. Among other problems with Petitioner’s proposed combination, Petitioner does not adequately explain how or why a person of ordinary skill would have combined the references to include the claimed port assignment and packet labeling for transmission of a packet from a preceding node and then between a first and second MPLS switch. See Pet. 56–59. Instead, Petitioner generally advocates for the combination of Raz and Ferguson, arguing for example that “both Raz and Ferguson are directed to solving the problem of ensuring enough bandwidth is available to communicate high-speed packet streams through an MPLS network.” Pet. 57 (citing Ex. 1006, 10:60–11:12, 14:33–41, 15:47–55, 17:1–9, Fig. 5; Ex. 1007, 1:28–42, 2:54–57, 4:55–60; Ex. 1004 ¶¶ 247–249). Further, Petitioner contends a person of ordinary skill “would have understood from the disclosures in Ferguson that techniques for utilizing an Ethernet physical data port in a LAG to communication data packets between routers or switches in an MPLS network are also applicable to the use of subports transmitting the data packets within the routers or switches, and vice versa.” Pet. 59 (citing Ex. 1004 ¶ 250; Ex. 1007, 5:61–6:6); see Pet. 56–59; Pet. Reply 20. But Petitioner does not adequately explain how the proposed combination of Raz and Ferguson would cure the deficiencies addressed above in Petitioner’s analysis of Raz for Ground 1. Among other problems, none of Petitioner’s arguments adequately address port assignment and labeling in the proposed combination, much less adequately explain why the proposed combination would satisfy the challenged claims. See Pet. 55–56. As Petitioner does not adequately explain how the teachings of Raz and Ferguson might be combined to cure the deficiencies addressed above, we additionally determine Petitioner’s arguments and evidence advanced for the combination of Raz and Ferguson do not establish obviousness by a preponderance of the evidence for any of claims 1–26.” slip op. at 11

  Patent outcomesUS 9,118,602 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,118,602
• Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentable
  PTAB · Feb 20, 2024 · IPR2022-01283 · APJ Monica S Ullagaddi · IPR · Final written decision

  The Board held claims 1–63 not shown unpatentable under either §103 ground because Petitioner did not sufficiently support the asserted digital mapping and delta limitations.

  RulingsFinal written decision

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

    “Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge. Petitioner’s obvious-to-try rationale is insufficient to show that a person of ordinary skill would have used a digital-to-digital-mapping in which there are regions in which the deltas are both decreasing and increasing. Moreover, Petitioner’s Reply includes positions not supported by a Reply Declaration from Dr. Blumenthal and thus, constitute attorney argument that is not sufficiently supported by evidence. See, e.g., Pet. Reply 14–15 (Petitioner arguing “Roberts’ design obviates the need for a separate,” slip op. at 32

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “Inst. Dec. 35 (citing Ex. 1006, 8:2, 8:8). Based on our review of the complete record developed during trial, we are persuaded to modify our preliminary determinations. For the reasons discussed below, we are persuaded that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion because the ’998 patent specification distinguishes analog pre-distortion (see Ex. 1001, 1:64–2:36) and the prosecution history specifically distinguishes analog pre-distortion from the claimed approach (see Ex. 3001, 172).6 We find persuasive Dr. Dallesasse’s testimony that “a person of ordinary skill in the art reading the [’998] patent would understand that th[e] [claimed] approach of mapping, based on the converter output pattern differs 6 Ex. 3001 is a portion of the prosecution history of U.S. Patent No. 11, 133, 872, a parent of the ’998 patent. Ex. 2022 ¶ 34 (citing Ex. 1001, 2:5–9 (’998 patent disclosing common, prior art solutions such as “an analog pre-distortion circuit to feed the modulator”); Ex. 1005, 2:53; Ex. 1006, 7:67–8:5, Fig. 6); Ex. 1001, 2:35– 37(the ’998 patent describing the need for a “digital to analog converter” that would “improve[] linearity of response without sacrificing efficiency or dynamic range” as in the common, prior art solutions). Dr. Dallesasse explains how “the prosecution history of the parent ’872 patent [illustrates] that when [Patent Owner] changed ‘correct for non-linearities’ to the more specific language ‘determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,’” “the Examiner then allowed the claims over a rejection based on Roberts,” which “suggests that there are ways to ‘correct for non-linearities’ that do not meet the amended claims, as the ’998 Patent itself admits.” Id. ¶ 79 (citing Ex. 1001, 2:5–9; Ex. 2009, 2; Ex. 1010, 16–48). During prosecution, Patent Owner argued: Roberts does not disclose a “digital-to-digital mapping,” where, “for a given plurality of N digital input data bits, the mapping to the corresponding M digital output data bits is determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,” as recited in amended claim 1. Instead, the linear compensation in Roberts is performed pursuant to a compensation function c(t) when the Vx(n) multi-bit sample streams are generated. Importantly, this linear compensation in Roberts occurs before the mapping of Vx(n) to Sx(n). As a result, the mapping between Vx(n) to Sx(n) in Roberts, such as the mapping shown in Table 1 of Roberts, is not a part of the linear compensation operation performed in Roberts. Ex. 3001, 172 (emphasis added). We interpret the quoted passage to exclude analog pre-distortion because we interpret the argument distinguishing distortion techniques––in particular, those accomplished by analog compensation function, c(t). Id. Both the ’998 patent and Patent Owner’s arguments during prosecution support Dr. Dallesasse’s testimony and Patent Owner’s position that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion.” slip op. at 34

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

    “limitation 1.9. This is because the idealized sinusoidal curves that form the basis of Dr. Blumenthal’s analysis lack a sufficient showing of relevance to the teachings of Taraschuk cited by Petitioner. Patent Owner persuades us that Petitioner does not point to any basis for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 1.8 and 1.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 1.8 and 1.9. Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two,” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “IV. MOTION TO EXCLUDE Patent Owner requests that we exclude Petitioner’s Exhibits 1031 through 1038 submitted with Petitioner’s Reply. Paper 25, 1. Petitioner opposes. Paper 27. As we do not rely on any of these exhibits in rendering the findings and conclusions in this Decision, Patent Owner’s motion is moot.” slip op. at 40

  Patent outcomesUS 11,342,998 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,342,998

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.