• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  Patent outcomesUS 10,574,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10

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

    “That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Shi does not disclose the claimed low-light high-pass parameter required by the asserted obviousness grounds.

  RulingsFinal written decision

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

    “Given the teachings of the specification, we agree with Patent Owner that a low-light high-pass parameter is a parameter of a smoothing function that favors high frequencies (high pass) when exposure times are long (low light). See Tr. 42:10–18 (Patent Owner’s counsel stating that “high-pass” means “there’s a bias or preference for high frequencies”); Ex. 2020, 93:23– 94:15 (Petitioner’s declarant, Dr. Katsaggelos, agreeing that a high-pass system attenuates the low frequency of a signal). Although we acknowledge Petitioner’s position that the specification provides other ways or considerations in implementing a smoothing function, based on our above analysis of the specification, we find that the specification describes the lowlight high-pass parameter as a specific component of a smoothing function. See, e.g., Ex. 1001, 21:17–25 (setting out several parameters besides the low-light high-pass parameter used in trajectory smoothing).” slip op. at 10

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

    “position and a real device position. Id. at 18:27–40. In other words, the blur is addressed by analyzing the image to identify motion and then shifting the image. Shi, however, does not disclose how its parameter is based on low light (or the long exposure times indicative of low light). In its Petition, Petitioner asserts that a person of ordinary skill in the art would understand that “blurs can be caused by low light conditions.” Pet. 28 (citing Ex. 1003 ¶ 111). Although this is true, that does not mean that Shi’s blurs are identified by a parameter that considers low light. As we just described, Shi identifies the blur by quantifying the amount of motion of the points in an image, not by identifying low light. This is simply a different way to determine the presence of motion blur. In Shi, blur is measured, whereas in the ’840 patent, it is inferred based on low-light conditions (e.g., by observing the exposure time). See, e.g., Ex. 1007, 18:7– 26; Ex. 1001, 19:12–26. In its Reply, Petitioner does not point to any further disclosures. Accordingly, we find that Shi does not disclose the “low-light” aspect of the claimed low-light high-pass parameter. This is sufficient to determine that Petitioner’s ground does not meet all claim limitations. Similarly, we find that Shi does not disclose the “high-pass” aspect of the parameter. Shi’s blur compensation uses a spherical interpolation to modify the image. Ex. 1007, 18:27–40. The low-light high-pass parameter, as we have construed the term, allows more high frequencies. To allow more high frequencies, this necessarily means either allowing fewer low frequencies, or allowing more high frequences as opposed to some counterfactual situation in which fewer high frequencies were going to be allowed. See Ex. 2020, 94:23–95:15; Ex. 2022. We are directed to no persuasive evidence from Petitioner that Shi’s spherical interpolation favors high frequencies over low frequencies. Accord Ex. 2018 ¶ 107 (Patent Owner’s expert stating that Shi’s spherical interpolation “reintroduce[es] both high- and low-frequency motion”). Even if Shi allows the viewing window to track the camera position “consistent with the natural blur in the image” (Ex. 1007, 17:63–67), we are not provided with sufficient evidence to conclude by a preponderance of the evidence that providing a similar visual goal as a high-pass parameter (Ex. 1001, 22:16–18, “the output motion may include high frequencies that mask motion blur”) is the same as having a high-pass parameter. Again, merely preserving high frequencies is not the same as having a “high-pass parameter” because, as construed, a “high-pass parameter” also involves some degree of attenuation of low frequencies or relative increase of high frequencies. Accordingly, we find that Shi does not disclose the “high-pass” aspect of the claimed low-light high-pass parameter.” slip op. at 18

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Ericsson Inc. / Nokia Of America Corporation v. XR Communications LLCNo claims unpatentable
  PTAB · Oct 3, 2025 · IPR2024-00613 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–5, 8–12, and 15–19 were not shown unpatentable because Petitioner did not sufficiently show that Agee alone or with Butler teaches the claimed signal information and weighting-value determinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “including the design of beamforming using multiple antennas.” Pet. 6. Petitioner contends that a person having ordinary skill in the art would have at least a Bachelor’s degree in Electrical Engineering or equivalent, and at least two years of work experience. Id. at 6–7. Petitioner adds that “[a] more advanced degree can substitute for some work experience.” Id. at 7 (referencing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge Petitioner’s proposed definition. PO Resp. 8. In our Institution Decision, we adopted Petitioner’s proposed definition, finding it to be consistent with the prior art of record and the skill reflected in the Specification of the ’235 patent, and previous proceedings concerning the ’235 patent. Inst. Dec. 13 (citing IPR2022-00367, Paper 10 at 24 (PTAB July 14, 2022); IPR2022-01155, Paper 11 at 13–14 (PTAB Jan. 5, 2023)). We continue to do so here.” slip op. at 13

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

    “C. Claim Construction The parties agree that the claims of the ’235 patent should be given their plain and ordinary meaning. Pet. 6; PO Resp. 8. Patent Owner also provides claim constructions adopted in related district court litigations for certain terms. PO Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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)). 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 discountedDecided for patent owner

    “each antenna” and “Agee’s Butler matrix measures a different signal strength for each of the 32 OFDM tones (channels) on each antenna” (Pet. 62), Agee does not describe that its Butler Forming Mode circuitry determines (or measures) signal strength. Rather, Petitioner relies on unsupported testimony from Dr. Mahon. Pet. 61 (citing Ex. 1003 ¶¶ 513– 536). Although Dr. Mahon affirmatively states that Agee discloses measuring the “signal strength” for limitations [1.4] and [1.5], he only quotes Agee’s column 45, lines 4–28 to conclude that “such measurements are detecting and processing the signal strength in the passages regarding the OFDM vector receiver receiving and detecting data induced on each antenna.” Ex. 1003 ¶ 524. However, the testimony provides no further explanation as to why this is the case other than quoting the paragraph. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Agee is not self-explanatory on this point. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). Consequently, assessing the probative value of the testimony, we find that the bare, unintelligible statements regarding Agee and how it allegedly teaches “signal strength” are entitled to little weight.14 14 We recognize that at the Decision on Institution stage, the panel credited Dr. Mahon’s testimony with respect to how the Butler matrix detects different phased signals at the antenna for limitations [1.3]−[1.5]. Inst. Dec. 24–28. Upon review of the full record, and in consideration of the preponderance of the evidence standard, however, we no longer view the testimony sufficiently supported. The “Board has an obligation to assess the question anew after trial based on a totality of the record, particularly where Further, it is unclear from both Petitioner’s contentions and Dr. Mahon’s testimony whether Petitioner is arguing that such functionality is inherent in Agee’s Butler matrix, common knowledge, how a person of ordinary skill in the art would understand Agee in light of general Butler matrix functionality, or something else entirely. See Netflix, 84 F.4th at 1377 (stating that “the Board should . . . not have to decode a petition to locate additional arguments beyond the ones clearly made”). Petitioner also does not provide sufficient support for these contentions from Butler. In sum, Petitioner relies on Dr. Mahon’s testimony for the contentions in limitations [1.4] and [1.5], at least with regard to determining “signal strength” as the recited determining first and second “signal information.” As explained in our Consolidated Trial Practice Guide15 (Nov. 2019) at 36: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis . . . Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 the standard changes.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1377 (Fed. Cir. 2016). “[T]he Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, 812 F.3d at 1068. 15 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself.” slip op. at 26

  • BurdenNot shown unpatentable

    “To that end, we find Petitioner’s contentions and evidence are insufficient as to limitations [1.4] and [1.5]. However, even assuming, arguendo, that Petitioner’s reliance on Dr. Mahon’s testimony is sufficient to show that limitations [1.4] and [1.5] are taught by Agee, i.e., that it is “evidently and indisputably within the common knowledge of those skilled in the art,” Petitioner still must show that the set of weighting values is determined based upon the signal strength, as recited in limitation [1.6]. As we discuss below, Petitioner’s contentions and evidence are insufficient for limitation [1.6].” slip op. at 28

  Patent outcomesUS 10,715,235 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,715,235
• Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentable
  PTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision

  Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)). We discuss the meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14

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

    “a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24

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

    “Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29

  Patent outcomesUS 7,653,414 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,653,414
• Motorola Mobility LLC v. Largan Precision Co., Ltd.No claims unpatentable
  PTAB · Jan 24, 2024 · IPR2022-01210 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–27 were not shown unpatentable because Petitioner did not establish a reason to combine Chung Embodiment 11 or 12 with Sekine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s declarant, Dr. Bentley, testifies that “a [POSITA] around the time of the invention would have had a bachelor’s degree in physics or optics, and at least three years of experience in the field of optical design, or its equivalent experience.” Ex. 2001 ¶ 28. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill. We note, however, that the two proposed levels of ordinary skill are similar and our analysis and conclusions would not change under Patent Owner’s proposed level of ordinary skill.” slip op. at 12

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

    “construction, “and only to the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner does not propose a specific construction for any terms and instead argues that “no claim terms require specific construction to resolve the unpatentability issues presented” in their Petition. Pet. 12. Patent Owner also does not propose any specific constructions in their Response, nor does their declarant, Dr. Bentley. We determine that no explicit constructions are required to resolve the dispute between the parties.” slip op. at 13

  • Exclude

    “G. Motion to Exclude Patent Owner filed a Motion to Exclude the portions of Mr. Aikens declaration testimony present in Exhibit 1003 and Exhibit 1045 relating to or arising from “lens design studies, simulations, or optimizations using Zemax lens design software, or otherwise rely[ing] on undisclosed facts and data.” Paper 45, 1. Because we do not rely on any of this evidence in this decision in a manner adverse to Patent Owner, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 44

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “F. Motion to Amend and Revised Motion to Amend As we determine that motivation to combine has not been shown by a preponderance of the evidence, we dismiss the Motion to Amend and Revised Motion to Amend pursuant to 35 U.S.C. § 316(d) because they were contingent upon our finding a claim of the ’519 patent to be unpatentable. MTA 1; Revised MTA 1.” slip op. at 44

  Patent outcomesUS 9,696,519 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,696,519
• Apple Inc. v. Memoryweb, LLCNo claims unpatentable
  PTAB · Jun 30, 2023 · IPR2022-00032 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–12 were not shown unpatentable over A3UM, Belitz, and Rasmussen because the obviousness challenge relied on an unsupported account of A3UM’s Places view and an inadequate combination rationale.

  RulingsFinal written decision

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

    “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art in 2011 (or 2014) would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 10. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 18. We continue to find that the skill level identified by Petitioner (Pet. 9) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 31

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

    “C. Claim Construction Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do no need to construe any terms to resolve the issues in this case.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “size version of the selected image in the Places view. PO Resp. 55 (citing Ex. 2025 ¶¶ 156–157). Patent Owner’s argument is adequately supported by Dr. Surati’s testimony. Ex. 2025 ¶¶ 156–157. We credit Dr. Surati over Dr. Terveen on this issue because Dr. Surati’s testimony is consistent with the teachings in A3UM. See id.; Ex. 1003 ¶ 186. Specifically, the Petition and Dr. Terveen’s declaration rely on page 251 of A3UM to support the assertion that the Places view displays the original digital image in the Viewer. See Pet. 50; Ex. 1003 ¶ 186. The cited part of A3UM provides an overview of the Viewer. Ex. 1005, 251. A screenshot showing the Viewer and Browser is reproduced below. Id. The screenshot shows a Viewer displaying the image selected in the Browser. Id. The Browser displays several thumbnail images. Id. The Viewer displays a larger detailed view of the selected thumbnail image. Id. Dr. Surati testifies that this part of A3UM is not describing the Places view. Ex. 2025 ¶ 159. According to Dr. Surati, “clicking the thumbnail in the Browser in the Places view does not cause the Places view map to be replaced with a full size image corresponding to the selected thumbnail image.” Id. ¶ 156. Dr. Surati’s testimony (id. ¶¶ 155–157) is adequately supported by” slip op. at 38

  Patent outcomesUS 9,552,376 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,552,376
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15

  Patent outcomesUS 10,749,060 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,749,060
• Mediatek Inc. / Mediatek USA, Inc. v. Nippon Telegraph And Telephone CorporationNo claims unpatentable
  PTAB · Feb 3, 2022 · IPR2020-01404 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable; the asserted obviousness combinations failed to teach or motivate the claimed mandatory-channel operation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner alleges a person having ordinary skill in the art “would have had at least a B.S. in Electrical Engineering, or the equivalent, and 3–4 years of experience designing wireless packet communication devices, including 802.11-compliant devices. More education could substitute for less experience, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 27–31). Patent Owner accepted Petitioner’s proposal in its Preliminary Response but does not take a position in its Response. See Paper 8, 4 fn.3. On this record, we adopt Petitioner’s proposal, which is consistent with the prior art of record.” slip op. at 9

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

    “meaning “one channel in a wireless multichannel communication system over which transmission must occur before transmission over the other wireless channels.” Inst. Dec. 21. Patent Owner argues the construction should be modified by substituting “whose idle state determines whether there can be a transmission” for “over which transmission must occur before transmission.” PO Resp. 1 n.1, 11–12. Patent Owner otherwise agrees with the preliminary construction. Id. at 1–2. We modify our preliminary construction of “mandatory channel” and adopt Patent Owner’s proposed construction of “mandatory channel.” We respond to Petitioner’s arguments against adoption of Patent Owner’s construction below. We therefore determine that “mandatory channel” means “one channel in a wireless multichannel communication system whose idle state determines whether there can be a transmission over the other wireless channels.”” slip op. at 10

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “In considering the “appropriate weight” to give a prior construction we look at “the similarities between the record in the district court or the ITC and the record before the Board”; “whether the prior claim construction is final or interlocutory”; “whether the terms construed by the district court or ITC are necessary to deciding the issues before it”; and “the facts and circumstances of each case.” Patent Trial and Appeal Board Consolidated Trial Practice Guide at 47 (Nov. 2019), https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. The briefing of the parties in the District Court suggests the evidence was substantially the same as here. See, e.g., Ex. 1056,8 14–17 (citing Shpak (Ex. 1005 here); Geier Declaration (Ex. 2005 here); Ex. 10589). The District Court’s Claim Construction Order states the construction is “final.” See Ex. 1055, 1 (“final construction”). Trial was set 8 ’632 Lawsuit, Plaintiffs’ Opening Claim Construction Brief, Dkt. 37. 9 ’632 Lawsuit, Transcript of Markman Hearing, February 4, 2021. for January 10, 2022, but the case was reassigned and an Order Resetting Schedule entered January 12, 2022, setting a pretrial for May 19, 2022, and a jury trial for June 13, 2022. ’632 Lawsuit, ECF No. 89; see also Inst. Dec. 42 (ordering the parties to advise us of “the setting of a trial date”). The construction could change as the record is further developed at trial. As to the necessity for construction, the District Court did construe “mandatory channel.” We disagree with Petitioner that the District Court “explicitly rejected [Patent Owner’s] contention that ‘mandatory channel’ limits the claims to multichannel systems.” Reply 19 (citing Ex. 1056, 14–17; Ex. 1057,10 7–9; Ex. 1058, 21:3–30:24); see Section III.C.1.c below. Petitioner argues the District Court construction is inconsistent with our preliminary construction. Id. at 19–20 (citing Inst. Dec. 21 (“Further, the ‘mandatory channel’ may be the only channel used and still be within the scope of the claims.”); Ex. 1055, 4 (“The Court found ‘mandatory channel’ may be the only channel . . . .”)). As shown in the italicized language above from each construction, we are not persuaded there is an inconsistency.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “c. “single wireless channel” In the Institution Decision we preliminarily found the preamble is limiting. Inst. Dec. 19. Neither party argues the preamble is not limiting, and for purposes of this Decision we maintain our finding that the preamble is limiting. 12” slip op. at 14

  Patent outcomesUS 7,280,551 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,280,551

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.