• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Cook and Bennett because the combination teaches the claimed wireless power system and provides reasons to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’687 patent, we apply the pre-AIA version of § 103. wireless energy transfer,” but “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 37– 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner “does not disagree with Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 9–10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

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

    “1. Confirm compatibility of the resonators and provide authorization for initiation of transfer of power Patent Owner proposes construing the phrase “confirm compatibility of the resonators and provide authorization for initiation of transfer of power” in independent claims 1, 7, and 13 to mean “verify that parameters of the resonators will permit power transfer and provide authorization prior to initiating the transfer of power.” PO Resp. 7. Patent Owner argues that the claim language “recit[es] two functions—confirming resonator compatibility and providing authorization,” which “indicates that confirming compatibility of the resonators must be different than providing authorization.” Id. at 7–8. Patent Owner also argues that the specification distinguishes “the confirmation of resonator compatibility” from “merely verifying that the vehicle to be charged is authorized to receive charging” slip op. at 6

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

    “a. Bennett’s resonant frequency tuning The evidence of record indicates that it would have been obvious to implement Cook’s wireless charging system using Bennett’s resonant frequency tuning. Ex. 1003 ¶ 114; Pet. 21–22. Specifically, Cook teaches that its wireless charging system requires “the right frequency” to charge a vehicle’s battery. Ex. 1007 ¶ 12; Pet. 24. But Cook does not teach how to adjust the resonant frequency of its wireless charging system to work with different vehicles. Ex. 1003 ¶ 114; Pet. 24. As discussed above, Bennett teaches tuning the power transmitting unit’s resonant frequency to the target electronic device’s requested resonant frequency. Ex. 1005 ¶¶ 37–38, 57– 58, Fig. 3. A person of ordinary skill in the art would have recognized that Bennett’s resonant frequency tuning would improve Cook’s wireless charger by making it compatible with different vehicles. Ex. 1003 ¶ 114; Pet. 24– 25. In addition, a person of ordinary skill in the art would have reasonably expected the combination to work because Bennett explains that its techniques apply generally to battery-powered devices. Ex. 1003 ¶ 121; Ex. 1005 ¶ 3; Pet. 28–29.” slip op. at 20

  • Strike new argumentNew argument consideredDecided for petitioner

    “in the Reply is an improper new argument. PO Sur-reply 15. We disagree. The Petition expressly relies on Bennett’s resonant frequency tuning as teaching the compatibility limitation. Pet. 49–50 (citing Ex. 1005 ¶¶ 37–38, 41). Patent Owner responds by arguing that Bennett’s resonant frequency tuning is an optional step that occurs after initiating power transfer. PO Resp. 23–24. In the Reply, Petitioner responds by pointing to Bennett’s Figure 3 as evidence that the resonant frequency tuning occurs before initiating power transfer. Pet. Reply 18–21 (citing Ex. 1005 ¶¶ 37, 57, Fig. 3; Ex. 1036 ¶¶ 28–29). Petitioner’s argument in the Reply properly relies on the same feature (i.e., Bennett’s resonant frequency tuning) and the same embodiment (i.e., the system shown in Figures 1 and 3) as the Petition. Ex. 1005 ¶¶ 29, 37–38, 57 (“FIG. 3 is a flowchart illustrating resonant power transfer operations performed using the power system of FIG. 1 . . . .”). Thus, Petitioner’s reliance on Bennett’s Figure 3 is a proper response to arguments in Patent Owner’s Response, not an improper new theory of unpatentability. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) ([T]he arguments and evidence in the reply must not be part of a new theory of unpatentability” and “must be responsive to the patent owner’s contentions or the Board’s institution decision.”).” slip op. at 16

  Patent outcomesUS 8,912,687 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,912,687
• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision

  Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10

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

    “D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8

  Patent outcomesUS 8,461,719 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,461,719
• Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentable
  PTAB · Jan 3, 2025 · IPR2023-01173 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 10, 11, 25, 27, and 30 are unpatentable under § 103 over Grotmol, Grotmol and Hickman, or Grotmol and Hoffman.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 6

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim 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). Neither party proposes an express construction for any claim terms. Pet. 5; PO Resp. 9. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D–II.F.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner’s arguments are unavailing. Grotmol teaches that a user may train a robot to learn “simple” and “complex” tasks. Ex. 1005, 24:17– 23. The evidence of record indicates that a person of ordinary skill in the art would have known to use different trainers “to train behaviors involving different levels of complexity in order to take advantage of the varying skills and knowledge of trainers.” Ex. 1003 ¶ 341. Thus, based on Grotmol’s teaching that a robot can learn both simple and complex tasks, a person of ordinary skill in the art would have had a specific reason for different users to train Grotmol’s robot for different behaviors, namely, to benefit from the users’ varying skills and knowledge. Pet. 25; Ex. 1003 ¶ 341; Ex. 1005, 24:17–23. Grotmol also teaches that a user may train a robot “using a gamepad (or other input device . . . ).” Ex. 1005, 26:9–13; see id. at 33:18–21. The evidence of record indicates that “switching users would be as simple as handing off a gamepad or other remote device used for controlling the robot from one user to another.” Ex. 1010 ¶ 73. Neither Patent Owner nor its declarant, Dr. Eli Saber, explains specifically why handing Grotmol’s gamepad to a different user would have created “complexities of combining the mixed knowledge into a single knowledgebase” or required “identifying each user to store particular learned operations and preferences in portions of the knowledgebase for user-specific autonomous operations.” See PO Resp. 14–15; PO Sur-reply 9; Ex. 2007 ¶¶ 128–130. Thus, based on Grotmol’s teaching of using a gamepad to train a robot, it would have been simple and straightforward for different users to train Grotmol’s robot for different behaviors. Ex. 1005, 26:9–13, 33:18–21; Ex. 1010 ¶ 73.” slip op. at 12

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

    “4. Reason to Combine Petitioner asserts that a person of ordinary skill in the art would have had reason to combine the cited teachings of Grotmol and Hickman. Pet. 27–30 (citing Ex. 1003 ¶¶ 159–166). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine Grotmol and Hickman so that Grotmol’s robots share training sets using Hickman’s shared robot knowledgebase. Id. at 30; Ex. 1003 ¶ 166. Doing so would have been obvious because Grotmol teaches sharing training sets between robots, and Hickman’s shared robot knowledgebase would facilitate wider and faster sharing of Grotmol’s training sets. Pet. 27–29; Ex. 1003 ¶¶ 160–161, 164; Ex. 1005, 33:27–32; Ex. 1007, 1:38–41, 5:41–46, 11:31–41. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Hickman’s shared robot knowledgebase with Grotmol’s robot because Hickman’s shared robot knowledgebase would “not interfere” with Grotmol’s robot. Pet. 30; Ex. 1003 ¶ 166.” slip op. at 24

  Patent outcomesUS 11,055,583 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 11,055,583
• Fusion Orthopedics, LLC v. Extremity Medical, LLCSome claims unpatentable
  PTAB · Nov 4, 2024 · IPR2023-00894 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–10 and 12–15 are unpatentable; claim 11 was not shown unpatentable. Substitute claims 16–25 and 27–30 are unpatentable over Mazur; claim 26 was not reached.

  RulingsFinal written decision

  • BurdenMixed

    “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.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Here, however, not until its Reply does Petitioner belatedly suggest that Ferrante’s disclosure of bone screws with self-tapping ends equally meets the limitation of claim 10 (with respect to the first member) as with claim 11 (with respect to the second member), and that both claims are obvious in light of “evidence” from Ferrante “that it was well known to equip bone screws with self-tapping ends.” Reply 26–27. We do not discern these arguments in the Petition, and consider them waived. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371,1377 (Fed. Cir. 2023) (“While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made.”). In sum, Petitioner’s error in failing to first address limitations of claim 10 in the Petition specific to the Cognet/Ferrante combination indicates a failure to meet the particularity requirements for what must be in the petition and cannot be left to be filled in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2) (requiring, among other things, “a detailed explanation of the significance of the evidence”), 42.104(b)(4)–(5) (requiring that petition “specify where each element of the claim is found in the prior art patents or printed publication relied upon” and, regarding submitted evidence, state “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge”). Microsoft, 2022 WL 989403, at *6. Accordingly, Petitioner has not shown persuasively that claim 11 would have been obvious in light of Cognet and Ferrante for the reasons set forth in the Petition. slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find persuasive Mr. Dominguez’s explanation that one of ordinary skill in the art would have understood “bore” as including stepped diameter holes, sometimes described as a bore having a counterbore. See generally Ex. 1018 ¶¶ 4–29; Reply 3–10. Three of Mr. Dominguez’s illustrative examples are reproduced in the annotated figures below. The above figures show Mr. Dominguez’s annotated illustrations from the Jackson (Ex. 1019, Fig. 3), Brånemark (Ex. 1021, Fig. 4), and Ray (Ex. 1025, Fig. 1) references as discussed at paragraphs 10, 12, and 13, respectively, of Mr. Dominguez’s Second Declaration. With reference to the above figures, Mr. Dominguez testifies that “Jackson describes a bone repair set screw in which ‘[t]he bore 27 comprises a first bore section 31, a second bore section 32,’ etc. delineated by shoulders 41, 42, etc. (Ex. 1019, 5:24– 43)” (Ex. 1018 ¶ 10); “Brånemark describes an osseous implantation device having body 1ʺ with first and second holding portions 21ʺ, 31ʺ and ‘an inner through bore with a first portion 4ʺ in the first holding portion and a second portion 5ʺ in the second holding portion.’” Ex. 1021, 4:44–46” (id. ¶ 12); and Ray discloses surgical calipers including “handle 12 having ‘stepped cylindrical bore 14,’” wherein “[c]ollar 20 of a shaft inserted in the bore ‘rests against a step of the bore 14’ (2:14–15)” (id. ¶ 13). Patent Owner responds that Mr. Dominguez’s examples “that allegedly show a single bore encompassing two or more stepped-diameter holes or a counterbore . . . . are specific to these references and divorced from the disclosures of the ’166 patent.” Sur-Reply 7. Insofar as the ’166 patent makes no mention of the term “bore” outside the claims, and Mr. Dominguez’s examples are all taken from the field of orthopedic surgery, we do not find this argument persuasive. Patent Owner further appears to contend that exemplary references to a “cylindrical stepped down bore” or a “stepped cylindrical bore” are too specific to be within the scope of the term “bore.” Sur-Reply 7–8. As these terms merely describe species within a larger genus, and Patent Owner presents no cogent reason to exclude them, we do not find this argument availing. Relatedly, we are also not persuaded by Patent Owner’s argument that “the prior art treats a ‘bore’ as an element that is distinct from a ‘counterbore.’” Id. at 8. Rather, we credit Mr. Dominguez’s testimony that “[a] counterbore is not a structure unto itself, a counterbore is part of a larger structure” as exemplified by numerous examples including Laps (Ex. 1028 ¶ 33 (sensor assembly wherein “bore 16 includes a counterbore 18”)); Martinez (Ex. 1029, 3:61 (surgical cutting instrument wherein “bore 56 has a counterbore 64”)); Zang (Ex. 1030, 2:49 (bone anchor having a “bore [that] includes a counterbore”)); Ledet (Ex. 1022, 29:3–5 (vertebral fixation plate having “through holes . . . . countersunk, or counterbored to accommodate the head of a bone screw”)); Seo (Ex. 1031, 3:45 (chair leg employing “counterbored bore 23”)); and Exner (Ex. 1032, 2:16 (extrusion press including “counterbored axial bore 6”)). Ex. 1018 ¶¶ 17–23. That a reference may refer to a figure as showing “bore 103” with “counterbore 105 . . . formed on one end” does not indicate that they are distinct structures as Patent Owner contends, but merely that the focus of each term is directed to the entire bore or to a particular aspect of the bore, i.e., its counterbore. See” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner subsequently proposed an alternative definition, as a person having “[a] Bachelor’s Degree in biomedical and/or mechanical engineering or similar training and . . . at least three years of experience with implant devices used for internal fixation of bones.” POR 5 (citing Ex. 2012 ¶¶ 32–33). According to Patent Owner, “[t]his hypothetical person would be capable of performing various design tasks and would understand the basic mechanical features and operation of orthopaedic implant devices [and] have an appreciation for orthopaedic fusion techniques and the medical issues and concerns faced by a doctor/surgeon charged when performing operations to implant orthopaedic devices.” Id. Despite some differences in wording, Patent Owner asserts (and Petitioner does not contest) that any “distinction between the parties’ proposed definitions of a POSITA does not affect the arguments set forth herein.” Id. (citing Ex. 2012 ¶ 34). Consistent with this view, we find the parties’ constructions equally applicable in light of the prior art of record and the disclosure of the ’166 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We adopt, for convenience, Petitioner’s definition, but our analysis does not change depending on which of the two articulations are applied here. H.” slip op. at 12

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

    “one of ordinary skill in the art would understand that “bore,” as used in the context of claims 1 and 12, encompasses a multi-diameter passage, and in particular, one having stepped longitudinal cross sections such as that shown in Cognet’s Figure 1. See generally DI 11–13. For the reasons that follow, we conclude that one of ordinary skill in the art would have understood “bore” as such. Relying on the testimony of Mr. Dominguez, Petitioner initially proposed a construction of “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool.” Pet. 16 (citing Ex. 1002 ¶ 58). Petitioner’s proposal relied on Mr. Dominguez’s testimony that “[a] bore is a cylindrical hole made by the spinning rotation of a twist drill cutting tool. It is typically made by removing material from a solid or hollow object, similar to a tunnel or orifice.” Ex. 1002 ¶ 58. Pointing to its annotation of Cognet’s Figure 1, above, Patent Owner argued that that the term “bore” excludes a tunnel made by “two adjacent bores.” See Prelim. Resp. 21–25. In view of the then-available evidence, we provisionally construed “bore” as a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have cylindrical lateral cross-sections, and which do not exclude holes or passages having tapered or stepped longitudinal cross-sections. DI 13.” slip op. at 19

  Patent outcomesUS 11,298,166 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,298,166
• Symrise AG / Symrise Inc. v. Inolex Investment CorporationAll claims unpatentable
  PTAB · Nov 1, 2024 · IPR2023-01035 · APJ Tina E Hulse · IPR · Final written decision

  The Board granted cancellation of claims 1–6, 8–10, and 22–28, and denied substitute claims 29–44 because Wright ’451 rendered them obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSA” or “POSITA”) would have had “a bachelor’s degree and two or more years of experience or a master’s degree in organic synthesis or chemical engineering, with education substituting for experience and vice versa.” Pet. 15 (citing Ex. 1002 ¶ 16). Patent Owner took no position on the level of ordinary skill in the art in its Preliminary Response. Prelim. Resp. 8. In our Institution Decision, we adopted Petitioner’s definition. Dec. Inst. 6–7. In its Motion to Amend, Patent Owner states that it accepts the Board’s definition for purposes of this proceeding. MTA 24. We, therefore, see no reason to disturb our definition of the level of ordinary skill in the art as it appears to be consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8

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

    “Although neither party expressly proposes a construction for the term “conversion,” the parties appear to differ in their interpretations of that term. Petitioner interprets “conversion” to mean the percent conversion of the 1- alcohol. See Pet. Opp. RMTA 6–7 (interpreting “conversion” as percentage of remaining 1-alcohol); Ex. 1040, 109:2–11. Patent Owner, on the other hand, interprets “conversion” to mean the total percentage of alkenes that have been produced. Ex. 2010 ¶ 123 (interpreting “conversion” as percentage of total alkenes). During oral argument, counsel for Patent Owner conceded that “conversion can mean either.” Tr. 27:18–28:13. Without the benefit of briefing by the parties, we decline to expressly construe the term “conversion,” as our Decision would be the same under either interpretation, as discussed further below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (finding only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy). Moreover, we do not find it necessary to expressly construe any other claim terms for purposes of this Decision. Id.” slip op. at 10

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

    “2. Analysis A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said claimed invention pertains. See also 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; (3) the level of skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Objective evidence of nonobviousness may include” slip op. at 13

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “We are not persuaded. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). We must, therefore, first consider what results were expected to determine what a POSA would have considered to be unexpected. Id. As seen by the table below, Wright ’451’s disclosure fully encompasses the temperature ranges and purported unexpected results recited by substitute claim 29 and shown in Table 2 of the ’048 Patent: Reference Reaction Calcination Conversion Regioselectivity Rate13 Temperature Temperature Wright ’451 about 220 °C about 200 °C greater than about 90% to to about to 600 °C about 95% about 99% 440 °C Substitute 240 °C to about 420 °C at least 95% to about Claim 29” slip op. at 23

  Patent outcomesUS 10,995,048 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,995,048
• Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentable
  PTAB · Jul 31, 2024 · IPR2023-00360 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–6 are unpatentable: claims 1–5 as obvious over Backhaus and Logan, and claim 6 as obvious over Backhaus, Logan, and Saksena.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art at the time of the alleged invention of the ’770 patent . . . would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of communication . . . More education can supplement practical experience and vice versa. Pet. 4 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’770 patent.” slip op. at 13

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

    “to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 45–46. As will be evident from our analysis below, we conclude that it would have been obvious to employ an IP-based communication. There is no dispute that an IP-based communications channel satisfies the term channel as used in the claims. Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. 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 14

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

    “not require the pre-call information to be transmitted after the call is received at the switch. The “general rule [is that], ‘[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.’” Mformation Techs., Inc., 764 F.3d at 1398. As discussed in greater detail below, we do not find the asserted claims, read in light of the Specification,6 to require that the pre-call information having a bridge number be transmitted after a call to a secondary number is made. We begin with the words of the claim. See, e.g., Phillips, 415 F.3d at 1314 (“[T]he context in which a term is used in the . . . claim [at issue] can be highly instructive.”). The complete “transmitting” step recites: transmitting pre-call information to the handset over the at least one data channel the pre-call information including the bridge telephone number and the handset-associated telephone number, such that the handset is capable of displaying the handset-associated telephone number to a user and, based on user input, accepting the incoming call by connecting with the switch over the at least one voice channel using the bridge telephone number. Ex. 1001, 10:29–37. The plain language of the claims requires that the pre-call information is transmitted such that the handset is capable of displaying the handset-associated telephone number and accepting the incoming call. Nothing in this language precludes the pre-call information from being transmitted before the incoming call is received at the switch— the requirement is that the information makes the handset capable of displaying the handset-associated telephone number to a user and accepting” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “The Petition, at page 41, makes the argument. We also do not agree with Patent Owner and Dr. Akl that a person having ordinary skill in the art would not have been motivated to employ IP-based communications for the pre-call information. Dr. Akl testifies that [i]f the relationship number was split into a separate transmission[] and transmitted faster than the call itself, as the Petition appears to suggest, then the relationship number could arrive before the call. In this case, the handset would have a notification relating to a call that is not ready to accept, which would be a bad experience for the user because the user would be able to see the incoming call notification but would be unable to accept it. Ex. 2010 ¶ 81. But this testimony ignores the fact that the scenario discussed in Backhaus is the case where a third party caller calls for the first time, and a relationship number is created. See Ex. 1005 ¶ 53. If the pre-call information arrives before the call, then the SLS module on the phone can use the information to display the caller information once the call is connected. Such an approach may avoid the situation where “unknown caller” needs to be displayed, for example. See id. ¶ 55. Indeed, Backhaus suggests Petitioner’s proposed use. See id. ¶ 73 (“Such channels can be used in setting up the relationship databases, sharing information between the SLS module 105 and the SLS platform 115.”). Because Dr. Akl’s testimony is inconsistent with Backhaus’s express teachings, we give it little weight.” slip op. at 42

  Patent outcomesUS 9,667,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,667,770
• Google LLC v. Flypsi, IncAll claims unpatentable
  PTAB · Jul 29, 2024 · IPR2023-00361 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 1–11 are shown obvious on the decided grounds; the additional Taylor grounds are not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication. . . . More education can supplement practical experience and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. PO Resp. 6. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based on the complete trial record, we adopt the assessment offered by Petitioner and undisputed by Patent Owner, as it is consistent with the ’105 patent and the asserted prior art.” slip op. at 7

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

    “the term, and invited further briefing. Dec. on Inst. 14–15. Patent Owner does not assert that this construction affects Petitioner’s “first way” obviousness assertions. PO Resp. 31. After consideration of the post- Institution briefing, we agree with Patent Owner that Petitioner’s “second way” obviousness assertions rely upon a lack of ordering in claims 1 and 2 such that the transmitting of pre-call information may occur prior to the receiving on an incoming call (Pet. Reply 3); therefore, the term “pre-call information” requires construction to resolve the controversy. The “general rule [is that], ‘[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.’” Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014). As discussed above, we do not find the asserted information having a bridge number be transmitted after a call to a secondary number is made. The plain language of the claim requires that the pre-call information include a bridge number “for connecting the handset to the incoming call at the switch”; i.e., information to be used with respect to the incoming call recited in limitation [1.d]. The transmission of the pre-call information may therefore be at any time such that its contents (the bridge number) may be used with respect to the recited incoming call. Consequently, we do not adopt Patent Owner’s proffered construction.” slip op. at 13

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

    “whether teachings other than Winbladh would be preferentially considered, improperly frame the obviousness question. Patent Owner and Dr. Akl emphasize that Winbladh uses a “‘host resource’ that manages multiple call legs,” arguing that is different from Backhaus’s “more limited” system that uses a “conventional call routing system.” PO Resp. 36–37 (citing Ex. 2010 ¶ 113). However, the obviousness question is “whether the relevant artisan would be motivated to make the combination to arrive at the claims’ actual limitations,” not whether such a combination would preserve all aspects of either Backhaus or Winbladh. See Axionics, Inc. v. Medtronic, Inc., 2023 WL 4410686 (Fed. Cir. July 10, 2023). Moreover, “it’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting PAR Pharm., Inc. v. TWI Pharms, Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Further, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference [but rather] what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020) (“KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B”). Here, Petitioner’s combination provides for a pre-call transmission of local telephone number #βr, and would logically provide advantage in those situations in which a long distance number was originally used for the connection; i.e., those situations for which Winbladh is purposed. We further note that a combination need not work in all situations for a person having ordinary skill in the art to find it advantageous. See Intel tradeoffs should be weighed when a benefit occurs during only some operating conditions).” slip op. at 39

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “4 Patent Owner argues that we should still address its proposed construction of the term “channel” because it “significantly impacts the credibility” of Petitioner’s declarant, Dr. Bill Lin. Tr. 68:3–24; PO Sur-reply 3 n.1. We disagree. The portions of the Lin Declaration that we rely on in this Decision are credible because those portions are consistent with and supported by the other evidence of record. See Sections II.D–II.E.” slip op. at 9

  Patent outcomesUS 10,051,105 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,051,105
• Google LLC v. Flypsi, Inc.All claims unpatentable
  PTAB · Jul 26, 2024 · IPR2023-00358 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7

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

    “Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 23–29. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 26–29. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7

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

    “art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 55–56; Ex. 1002 ¶ 101. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 54–56; Ex. 1002 ¶ 101; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 57; Ex. 1002 ¶ 102.” slip op. at 22

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “because it is “highly conclusory” and “internally contradictory,” and because Dr. Lin “could not explain his opinions at deposition.” PO Resp. 38–39; PO Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26

  Patent outcomesUS 10,334,094 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,334,094
• Google LLC v. Flypsi, Inc.All claims unpatentable
  PTAB · Jul 26, 2024 · IPR2023-00357 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1, 2, and 4 as obvious over Backhaus and Taylor, and claim 3 as obvious over Backhaus, Saksena, and Taylor.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication.” Pet. 4–5 (citing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s description. PO Resp. 5. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 7

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

    “Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. We rely only on the “second way” for purposes of this Decision. See Section II.D.3; Pet. 25–26. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–23; PO Sur-reply 11; Tr. 10:2–11, 68:3–24.1 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 7

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

    “had reason to combine the cited teachings of Backhaus and Taylor. Pet. 50– 54 (citing Ex. 1002 ¶¶ 94–100). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine the teachings of Backhaus and Taylor so that Backhaus’s SLS platform communicates with the PSTN using Taylor’s PSTN interface. Id. at 53; Ex. 1002 ¶ 97. Doing so would have been obvious because Backhaus teaches using its SLS platform with a PSTN, and Taylor provides an interface that allows an external system, such as Backhaus’s SLS platform, to communicate with a PSTN. Pet. 52–53; Ex. 1002 ¶ 97; Ex. 1005 ¶ 32; Ex. 1007 ¶¶ 4, 8. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Taylor’s PSTN interface with Backhaus’s SLS platform. Pet. 53–54; Ex. 1002 ¶ 98.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Sur-reply 15–17. In particular, Patent Owner contends that the Lin Declaration “does not contain any statement of the legal standards the expert understood or was applying, such as standards relating to defining the person of ordinary skill in the art, anticipation, or obviousness,” and Dr. Lin “could not recall whether Petitioner gave him instructions on any legal principle.” PO Resp. 39–40 (citing Ex. 2009, 9:1–11, 14:5–17:6, 23:6–11, 25:3–10, 26:9–22, 33:11–34:1, 34:3–11); PO Sur-reply 16. Patent Owner’s argument is unavailing. We do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. See Sections II.D.3, II.D.6, II.E.1, II.E.2. Thus, irrespective of whether the Lin Declaration discusses a particular legal standard, we do not disregard the entire Lin Declaration.” slip op. at 26

  Patent outcomesUS 11,218,585 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,218,585
• Google LLC v. Flypsi, Inc. (D/B/A Flyp)All claims unpatentable
  PTAB · Jul 26, 2024 · IPR2023-00359 · APJ James J Mayberry · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1, 2, and 4 over Backhaus and Taylor, and claim 3 over Backhaus, Taylor, and Saksena.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art . . . at the time of the alleged invention of the ’554 patent would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of telecommunication . . . More education can supplement practical experience and vice versa. Pet. 4–5 (referencing Ex. 1002 ¶¶ 17–18). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 5. For the purposes of this Decision, we apply Petitioner’s undisputed definition of the level of ordinary skill in the art. We find that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’554 patent.” slip op. at 13

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

    “challenged claims to resolve the underlying controversy.” Pet. 8. Patent Owner proposes construing the term “channel” in all challenged claims to refer to “[a] channel [that] does not have to be fully connected on both ends or actually transmitting a particular type of information to qualify as a channel.” PO Resp. 6. Petitioner asserts that Backhaus teaches transmitting an access telephone number via a data channel in two ways. Pet. 22–26. As will be evident from our analysis below, we rely only on the “second way” for purposes of this Decision. Patent Owner’s proposed construction of the term “channel” does not impact the parties’ dispute about the “second way” that Backhaus teaches transmitting an access telephone number via a data channel. PO Resp. 21–22; Pet. Reply 3 (“Flyp does not even allege that its construction is relevant to the ‘second way’ the Petition addresses limitation [1.b].”); PO Sur-reply 11; Tr. 10:2–11, 68:3–24.5 Therefore, we determine that the term “channel” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. 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)). Also, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes. To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “suggest that we categorially disregard Dr. Lin’s declaration. As a general point, our precedential decision in Xerox does not provide a blank condemnation of declaration testimony that is identical or virtually identical to language in a paper. Xerox found that the “cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox at 15; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Here, Dr. Lin cites to evidence to support certain testimony. See, e.g., Ex. 1003 ¶ 73 (citing to Ex. 1007 and Ex. 1011). Also, we do not rely on the Lin Declaration as evidence of any legal standard or for Dr. Lin’s legal conclusions. Rather, we rely on the Lin Declaration to support our factual determinations regarding the teachings of Backhaus, Saksena, and Taylor, as well as why and how a person of ordinary skill in the art would have combined those teachings. Finally, Patent Owner’s arguments go to the weight of Dr. Lin’s testimony. We assess the appropriate weight to give the testimony in our analyses below.” slip op. at 15

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

    “provided a motivation to combine the teachings of a PSTN interface in Backhaus’s system, even though Backhaus discloses interfacing with the PSTN. Backhaus is silent as to how its system interfaces with the PSTN. As such, we agree with Petition that a person having ordinary skill in the art would have been motivated to connect SLS platform 115 with the PSTN and to also include a PSTN interface in order to facilitate such an connection when implementing Backhaus’s system and processes—such that SLS platform 115 could provide the disclosed second line services to many device users connected to the PSTN that is known to provide reliable communications. Pet. 50. Indeed, Patent Owner’s argument that Backhaus discloses interacting with the PSTN strengthens Petitioner’s position, demonstrating that a person having ordinary skill in the art, when considering Backhaus’s and Taylor’s teachings together, would have used a PSTN interface to ensure a connection with a PSTN. Cf. Pet. Reply 19 (“Rather, it shows that a [person having ordinary skill in the art] would have been motivated to ‘include a PSTN interface similar to that discussed in Taylor when implementing Backhaus’s telephony service system.’” (citing Pet., 49–51)).” slip op. at 32

  Patent outcomesUS 11,012,554 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,012,554

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.