• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00710 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7, 9, 13, and 16–20 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 8 was not shown unpatentable under either ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicates that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction. Thus, no express construction is required.” Pet. 13 (citing Ex. 1003 ¶ 86). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

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

    “rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “and reliance on Figure 19 do not in any way explain how updating game costs by meter 502 with a new Cost_Table is relevant to a credit multiplier or even a multiplier being varied over time. Ex. 1003 ¶ 155. Considering this evidence, we determine that Petitioner and Mr. Crevelt’s reliance mainly on snippets from Schneier’s “Updating Cost Information protocol” embodiment does not sufficiently explain why or how a person of ordinary skill in the art would have understood updating game cost to encompass varying a multiplier of credits over time. We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004:158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to persuasive evidence in Schneier as to how or why a person of ordinary skill in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 8.” slip op. at 20

  Patent outcomesUS 10,825,294 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,825,294
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00709 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 4, 6, 8, 10, 14–18, 21–23, 25, 27, and 29 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 9 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states it “does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” PO Resp. 4. Patent Owner states further that “this [Patent Owner Response] and supporting declarations apply Petitioner’s proposed level of skill.” Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicated in the Petition that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction.[] Thus, no express construction is required.” Pet. 12–13 (citing Ex. 1003 ¶ 85). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004, 158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. Id. at 161:2–6. These explanations are unpersuasive because the testimony relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 9.” slip op. at 21

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

    “Discount Credit Pricing Structure The $0.20 discount described by Schneier for purchasing 20 credits, rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not address the idea of a time component, i.e., “over time,” as required by claim 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 18

  Patent outcomesUS 10,650,635 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,650,635
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00047 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited art did not teach flanges physically touching along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20

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

    “But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19. Further, as argued by Petitioner (Pet. Reply 4–5), Patent Owner’s proposed construction limiting “portion” to “all portions” of the hanger that “directly bound the channel that receives the structural component” could cause the “channel-shaped portion” on the same physical hanger to change depending on which type of structural component an installer were to choose to use in construction: Patent Owner’s claim construction improperly focuses on the wall assembly intended to be used with the recited hanger. The claims, however, are directed to a hanger, not a wall assembly. When assessing what part of a hanger constitutes a “channel-shaped portion” and an “extension portion,” [the skilled artisan] would consider the physical features of the hanger itself and the natural divisions between those features. [The skilled artisan] would not assess the claim language and its application to the prior art by speculating how an installer might later install the hanger with a joist or an entire wall assembly, which may differ from installation to installation. Pet. Reply 4 (citing Ex. 1046 ¶ 19). We find this defect further supports a broader interpretation of “channel-shaped portion” as discussed above. Accordingly, based on the complete record before us, we determine” slip op. at 34

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

    “Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find” slip op. at 46

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10

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

    “Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. 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 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 27

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

    “Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19

  Patent outcomesUS 10,846,941 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,846,941
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentable
  PTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision

  Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.

  RulingsFinal written decision

  • Expert testimonyOther

    “prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26

  • ExcludeDenied

    “III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15

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

    “Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27

  Patent outcomesUS 8,458,028 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,458,028
• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstituted
  PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12

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

    “Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14

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

    “Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,284,690
• Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCAll claims unpatentable
  PTAB · Jul 9, 2024 · IPR2023-00407 · APJ Robert J Silverman · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Stanziale ’771; the Board did not reach the alternative grounds.

  RulingsFinal written decision

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

    “As an initial matter, the recited expression “mounted to” is broad. The Federal Circuit has explained that words in a claim “will ordinarily be given their full meaning,” without imposing narrowing modifications on the claim language. Johnson Worldwide, 175 F.3d at 989, see also Virginia Panel, 133 F.3d at 865–66. As to whether the “mounted to” connection may be an indirect connection, the parties agree that an indirect connection is permitted — a view that is amply supported by the intrinsic record, as discussed above. With regard to the types of movement that may occur between a “string guide” and a corresponding “limb,” the intrinsic record shows that that various types of movements (including no movement at all) are characterized as “mounted to.” Slight variations of “mounted to,” occurring in the intrinsic record, are helpful in understanding the claim language — particularly because the ’015 patent itself uses such a variant (“mounted . . . on”) to describe the very connection (between a “string guide” and a “limb”) that is elsewhere, and in claim 1, is described as “mounted to.” See Ex. 1001, 5:23–26.” slip op. at 22

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

    “Patent Owner’ sole argument — i.e., that Stanziale ’771 fails to teach the “mounted to” limitation — is based upon its construction of the “mounted to” limitation, which permits the “string guide” to be rotatable relative the corresponding “limb,” but permits no other type of relative motion. See PO Resp. 4, 13–14. As discussed above, we do not accept Patent Owner’s construction of the “mounted to” limitation. In Stanziale ’771, first and second pulleys 145, 146, and interconnecting pivot 147 (all three of which Petitioner maps to claim 1’s “string guide[s]”) are pivotally connected to a number of intermediate members (e.g., lever arms or pushing arms 32, connecting elements 27, and constraining member 29) which are, in turn, pivotally connected to elastic members 10 (which Petitioner maps to claim 1’s “limb[s]”). See Pet. 41–42 (citing Ex. 1012 7:9–17, 8:26–8:13, 11:8–9, 14:18–15:22, 16:24–25, 16:29, 17:2, 17:15–17, 17:24–27, 19:12–30, 20:32–21:16, Figs. 1–7; Ex. 1016 ¶¶ 177–179); see also Ex. 1012 11:3–7, 11:34–12:4, 12:10–17, 16:29–18:3, 18:22–19:30, Figs. 8, 9, 10a, 10b. Therefore, Stanziale ’771, in Petitioner’s mapping, teaches the “string guide[s]” connected indirectly to the “limb[s].” Per the construction of the “mounted to” limitation employed herein (“connected to, either directly or indirectly”), Petitioner establishes, by a preponderance of the evidence, that Stanziale ’771 teaches the “string guide[s]” “mounted to” the “limb[s],” as recited in claim 1 of the ’015 patent. Contrary to Patent Owner’s concerns (see Paper 47, 1), the indirect connection between Stanziale ’771’s “string guide[s]” and “limb[s]” is not “unbounded.” Rather, the connection disclosed by Stanziale ’771 is the type of indirect connection supported by the intrinsic record. See supra § II.B. Patent Owner’s contention that “a POSA would be disinclined to rely on [Stanziale ’771] as a reference for the improved crossbow design disclosed in Claim 1” is not persuasive. See PO Resp. 38 (citing Ex. 2029 ¶ 46). The test for anticipation is whether a prior art reference discloses each and every element recited in the claim, not whether one of ordinary skill in the art would have been inclined to rely on the reference. See Net MoneyIN, Inc., 545 F.3d at 1369.” slip op. at 32

  • ExcludeMotion to exclude, deniedMixed

    “Motions to exclude evidence are authorized under 35 C.F.R. § 42.64. Rule 42.64(b)(1) states: “Once a trial has been instituted, any objection [to evidence] must be filed within five business days of service of evidence to which the objection is directed.” Further, “[t]he objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 35 C.F.R. § 42.64(b)(1). “A motion to exclude evidence must be filed to preserve any objection.” 35 C.F.R. § 42.64(c).” slip op. at 40

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In the present proceeding, Petitioner proposed — and Patent Owner does not dispute (see PO Resp. 3) — the following definition of a person of ordinary skill in the art: A hypothetical POSA to which the ’015 Patent pertains would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows. (Ex. 1016 ¶17.) Such a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows. (Id.) Pet. 28. As discussed above, we adopt Petitioner’s description of a person of ordinary skill for the purposes of this Decision. See supra § II.A. Petitioner alleges various deficiencies in Mr. Teater’s background, education, and knowledge. Paper 39, 4–8. Nevertheless, Mr. Teater satisfies the definition, of a person of ordinary skill in the art, that Petitioner advanced. Specifically, Mr. Teater has reviewed crossbows for 14 years, encompassing the relevant priority date for the ’015 patent, during which time he wrote evaluations of various bows and crossbows, developed and published testing standards for crossbows, and served on the Archery Trade Association’s technical committee for standards and guidelines. Paper 41, 4 (citing Ex. 2029 ¶¶ 3, 4, 7). Accordingly, Mr. Teater satisfies Petitioner’s definition of “a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows.” Pet. 28. Petitioner emphasizes that Mr. Teater “does not have a degree in mechanical engineering.” Paper 39, 4 (citing Ex. 2034, 1; Ex. 1034, 43:20–44:5). However, no degree of any kind is mandatory for satisfying Petitioner’s definition of a person of ordinary skill in the art. Indeed, Petitioner’s definition states that “[s]uch a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (emphasis added). There is no dispute that Mr. Teater meets this standard. Petitioner raises various other issues that form no part of the definition that Petitioner advanced — for example, whether Mr. Teater has taught courses related to crossbows, whether he is named as an inventor on a” slip op. at 36

  Patent outcomesUS 9,354,015 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 9,354,015
• International Business Machines Corporation v. Ebates Performance Marketing, Inc. Dba Rakuten RewardsSome claims unpatentable
  PTAB · Feb 2, 2024 · IPR2022-01250 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–5 and 7–22 are unpatentable as obvious; claim 23 was not shown unpatentable because the petition did not identify corresponding structure for limitation 23A.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the art “would have been someone knowledgeable in information technology and networking” and “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately 2 years of experience working in information technology and networking.” Pet. 17–18 (citing Ex. 1002 ¶ 111). Without agreeing that it is proper, Patent Owner and its expert apply Petitioner’s proposal. See PO Resp. 8 (citing Ex. 2002 ¶¶ 33–34.). For the purposes of this Decision, we continue to use the same assessment offered by Petitioner that we adopted in our preliminary assessment of a person of ordinary skill in the art in the Institution Decision, as it is consistent with the ’960 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “exception to a security rule” and/or “exceptions to security rules.” See e.g., Ex. 1001, 15:18, 15:29. In its Response, Patent Owner asserts that the plain meaning of the phrase “exception to a security rule” is “an instance in which a security rule does not apply.” Id. at 9. Patent Owner asserts that “[t]he ’960 patent does not set out any special definition of ‘exception,’ ‘exception to a security rule,’ or ‘exceptions to security rules.’” Id. (citing Ex. 2005 ¶¶ 41–43). Patent Owner also indicates that “the ’960 patent describes that exceptions to security rules may represent an ‘anomaly’ from general circumstances, or a situation in which a security rule may be permissibly violated such as once an administrator or manager grants approval for a violation.” PO Resp. 9 (citing Ex. 1001, 5:58–6:15, 7:22–39, 9:51–10:18). Patent Owner asserts that “[a]n exception to a security rule can be associated with adjusting risk indicated by the security rule,” and that “exceptions may indicate instances in which risk should be scored differently than what is specified by the general security rule and to which the security rule does not apply.” PO Resp. 10. In its Reply, Petitioner agrees with Patent Owner that the plain and ordinary meaning of the term “exception to a security rule” is “an instance in which a security rule does not apply,” and that this agreed upon meaning is consistent with the ’960 patent in that that “minimum security baseline rules may include minimum security policies.” Pet. Reply 2–3. Given the absence of a special definition of these phrases in the ’960 patent, the ’960 patent’s indication that minimum security baseline rules may include minimum security policies, the lack of any testimony by the parties’ experts contesting a general understanding of the term in the art, and the agreement by the parties as to the plain meaning of the term, we adopt for purposes of this Decision that the plain and ordinary meaning of the phrases “exception to a security rule” or “exceptions to security rules” mean “an instance in which a security rule does not apply.” See PO Resp. 8–16; Pet. Reply 2–5; Ex. 2005 ¶¶ 41–57; Ex. 1002 ¶¶ 66, 114–115, 134, 185; Ex. 2006, 62:2–24. slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “means plus function limitations. Ex. 1001, 18:22–37. 35 U.S.C. § 112 “allows a patentee to express a claim limitation by reciting a function to be performed rather than by reciting structure or materials for performing that function.” Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003). A term written in means-plus-function form is construed to cover “the corresponding structure, material, or acts described in the specification and equivalents thereof” for performing the recited functions. 35 U.S.C. § 112, para. 6. Use of the term “means” creates a rebuttable presumption that a claim term is a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption may be rebutted if the claim recites structure sufficient to perform the described functions in their entirety. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–1260; see Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011) (noting that one may still consider the written description to “inform the analysis of whether the claim recites sufficiently definite structure to overcome the presumption that § 112 ¶ 6 governs the construction of the claim”) (overruled on other grounds by Williamson, 792 F.3d at 1339). In our Institution Decision, we preliminarily adopted Petitioner’s construction of the means-plus-function limitations in the challenged claims. Dec. 15. Each of claim 23’s limitations is presumptively written in means-plus-function form, and prior to institution, Patent Owner did not attempt to rebut this presumption and did not point to anything in claim 23’s limitations that articulated structure sufficient to perform the described functions in their entirety. Id. (citing TriMed v. Stryker, 514 F.3d at 1259–1260). Post institution, Patent Owner agrees the terms should be interpreted under 35 U.S.C. §112 ¶ 6 as means-plus-function terms, that the specification describes appropriate corresponding structure for each of these terms, and that each of these terms is not indefinite. PO Resp. 17 (citing Pet. 18–20; Ex. 1002 ¶¶ 116–133). For some of the claim terms, Patent Owner identifies “a more complete listing of corresponding structure.” Id. In its Reply, Petitioner does not object to Patent Owner’s identification of corresponding structure. See generally Pet. Reply.” slip op. at 12

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

    “Petitioner argues that a person of ordinary skill in the art “would have been motivated to modify Andres’s system in view of Dodd’s teachings to provide the option to consider the difficulty in fixing a particular vulnerability.” Pet. 22. Petitioner points out that “Andres teaches a vulnerability remediation module 127 which ‘provides automated ticketing and workflow that manages remediation activities’ (Ex. 1003, 19:39–41) and that risk scores should inform the remediation process, such that administrators can ‘first take the remediation steps that will most significantly improve the overall security of the network.’” Pet. 22–23 (citing Ex. 1003, 18:21–23). Petitioner asserts that “Dodd similarly teaches ‘when multiple vulnerabilities have the same computed risk, a user of the security audit system can address those that are easier to fix first.’” Pet. 23 (citing Ex. 1004 ¶ 37). “Such remediation prioritization,” Petitioner argues, “allows an administrator to be more effective in his or her responsibilities even with the limited time and resources of many administrators.” Pet. 23 (citing Ex. 1003, 18:23–25; Ex. 1002 ¶¶ 138–140). Petitioner asserts that “Dodd provides the option to use a ‘fix difficulty value’ for the vulnerability to adjust a risk value associated with that particular vulnerability.” Pet. 23 (citing Ex. 1004 ¶ 36). Petitioner asserts that a person of ordinary skill in the art “would have understood Dodd’s optional adjustment of risk values based on the vulnerability fix difficulty to be an obvious addition to Andres.” Pet. 23. “Indeed,” Petitioner argues, “the same problem of effectively prioritizing remediation actions described in Andres underlies the adjustment process of Dodd.” Id. (citing Ex. 1004 ¶¶ 10, 23; Ex. 1002 ¶¶ 141–142). Petitioner also argues that a person of ordinary skill in the art “would have been motivated by the common goals of Andres and Dodd (utilizing risk scoring to inform/prioritize vulnerability remediation) to incorporate Dodd’s adjustment process into Andres’s system.” Pet. 24. “By adding Dodd’s option to adjust the risk score by a fix difficulty value to Andres’s system,” Petitioner argues, “a user of the combined system could more effectively prioritize the easiest to fix vulnerabilities, and therefore decrease the number of vulnerabilities threatening the network.” Id. (citing Ex. 1004 ¶ 37). “This would facilitate the early resolution of easier vulnerabilities,” Petitioner argues, “before they can be exploited in an attack and allow the ‘limited time and resources’ of administrators to be focused on the more difficult vulnerabilities.” Id. (citing Ex. 1003, 18:23–25). Petitioner argues that the enhanced prioritization “would also allow administrators to incorporate business factors such as cost into decisions about remediation.” Id. (citing Ex. 1002 ¶¶ 143–144).” slip op. at 30

  Patent outcomesUS 7,962,960 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,962,960
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00913 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 20, and 21 are unpatentable as anticipated by Heller; the evidence does not establish claims 4–6, 8, or 23–26 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Expert testimonyMotion to exclude, deniedDenied

    “In opposition, Patent Owner first argues, and we agree, that Petitioner failed to timely object to Dr. Laura’s declaration with sufficient particularity. MTE Opp. 1–3 (citing 37 C.F.R. § 42.64(b)(1)). Our Rule requires that an “objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 37 C.F.R. § 42.64(b)(1)). Petitioner’s objection to Dr. Baura’s testimony identifies hundreds of paragraphs from her declaration followed by an objection stating her “testimony is based on insufficient facts or data, is not the product of reliable principles and methods, and does not reliably apply the appropriate principles and methods to the fact of the case.” Paper 25, 2. Petitioner’s boilerplate objection is woefully insufficient to show that Petitioner objected with sufficiently particularity to allow correction in the form of supplemental information, as our Rule requires. We further agree with Patent Owner that Petitioner’s arguments in the MTE are no more than a “transparent attempt to . . . circumvent the word-count limits of its merits briefing by injecting merits arguments in its evidentiary motion.” MTE Opp. 9. In short, Petitioner’s arguments go to the weight to be afforded Dr. Baura’s testimony, not to its admissibility, and are, therefore, an improper basis for seeking the exclusion of hundreds of paragraphs Dr. Baura’s declaration. Accordingly, Petitioner’s MTE is denied.” slip op. at 63

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. Resp. 9. Dr. Baura, in support of Patent Owner, states that she applied Petitioner’s “definition of the level of ordinary skill in the art, because,” in her opinion, Petitioner’s “and Dr. Smith’s conclusions are incorrect even under this definition.” Ex. 2010 ¶ 29. Thus, Dr. Baura neither adopts as proper nor refutes Petitioner’s proposed level of ordinary skill. We find that the ’213 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and the ’213 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17

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

    “In view of the issues we address below, including how the claimed subject matter is alleged to have been taught or disclosed in the prior art, we determine that it is not otherwise necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that Petitioner’s anticipation argument is insufficiently supported by Heller or the other evidence Petitioner relies upon. Petitioner directs us to no evidence in Heller expressly addressing a predictive relationship between in vitro and in vivo sensitivity, much less any disclosure in Heller of a particular relationship. Instead, Petitioner seeks to stretch a thin disclosure in Heller that “calibration data may simply be factory-determined calibration measurements” to necessarily mean “prior sensitivity information is derived at least in part from a predictive relationship between an in vitro sensor sensitivity to glucose and an in vivo sensor sensitivity to glucose,” as required by claim 23. Pet. 36; Ex. 1005, 77:14–15. Notably, Dr. Smith does not identify any “predictive relationship” disclosed by Heller. Ex. 1002 ¶¶ 148–149. We give little weight to Dr. Smith’s conclusory assertion that a person of ordinary skill in the art would have simply “recognized” Heller’s “factory determined calibration measurements” were necessarily “derived at least in part from a predictive relationship between an in vitro and an in vivo sensor sensitivity to glucose,” particularly where Heller does not expressly preclude in vitro measurements from its “factory determined calibration measurements.” See id. Further, in reply, Petitioner argues again that “(1) Heller discloses that calibration data can ‘simply be factory determined calibration measurements’ . . . and (2) a [person of ordinary skill in the art] would have recognized that this ‘discloses that factory (in vitro) determined sensitivity adequately predicts in vivo sensitivity.’” Reply 6. From Heller’s disclosure preponderance of the evidence that Heller expressly teaches any predictive relationship, even one in which in vitro and in vivo sensitivity are the same. that calibration data can “simply be factory determined calibration measurements,” Petitioner provides no more than speculation to suggest that there necessarily must be some relationship between in vitro measurements and in vivo measurements. See Reply 6–8. Because Petitioner has not shown by a preponderance of the evidence that Heller discloses all of the limitations of clam 23, we determine Petitioner has not shown that Heller anticipates claim 23.” slip op. at 31

  Patent outcomesUS 11,000,213 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213
• Abbott Diabetes Care Inc v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 1, 2023 · IPR2022-00909 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–4, 19, and 23 are unpatentable as obvious; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “including a “predictive glucose value,” nowhere do we find the written description or drawings to have delineated such a second function expressly as “the present invention.” See, generally, Ex. 1001; see also Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022) (“We have repeatedly held that ‘it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.’”) (citation omitted). And, regardless of the exact wording, the concern we have is that without a persuasive, express, indication in the specification that the “second function” is specifically limited to “predicting glucose values,” it is a disfavored path to read limitations into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import limitations into a claim that are not expressly part of may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The facts and written description here appear to fall more squarely into the category of cases where it is not enough to simply point to embodiments in the specification including the unrecited claim limitation. See Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (Even in cases where a “present invention” statement is provided, the Federal Circuit has explained that ‘[w]hile clear language characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, . . . such language must be read in context of the entire specification and the prosecution history.”) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41.” slip op. at 35

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

    “second function.” PO Resp. 19. However, neither did Patent Owner provide an express construction. See generally id. is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41. slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision we determined, in accordance with Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’215 patent [w]ould have had a Bachelor’s degree in biomedical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, including at least some experience in researching, developing, designing and/or evaluating (or supervising the same) methods, systems, or algorithms for providing indicators (e.g., alerts, alarms or other indicators) of analyte levels to users, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Inst. Dec. 8; Pet. 9–10 (citing Ex. 1002 ¶¶ 24–26). Patent Owner states that “DexCom does not challenge Petitioner’s POSA definition (Petition, 9-10) because the Petition fails even if it is adopted.” PO Resp. 9 (citing Ex. 2008 ¶¶ 20–23). ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’215 patent and the asserted prior art, we continue to rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11

  Patent outcomesUS 10,702,215 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,702,215

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.