- Fluidmaster, Inc. v. Danco, Inc.All claims unpatentablePTAB · Mar 11, 2026 · IPR2024-00635 · APJ Meredith C Petravick · IPR · Final written decision
The majority held claims 1–14 unpatentable under §103 over Guoxin, Ho, and the Quick Connection Art; one judge dissented as to claims 8, 9, 12, and 13.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A person of ordinary skill in the art (“POSITA”) with respect to the subject matter of the ’698 patent at the time of the priority date, March 11, 2004, would have had an undergraduate degree in mechanical engineering, or other technical training in product design or equivalent work experience. This person would also possess at least one year of experience in developing and/or evaluating mechanical aspects of fluid systems. I consider myself a person of ordinary skill in the art under this definition. Ex. 1004 ¶ 28. Patent Owner argues: A POSITA in the field to which the ’698 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or research experience in the design or development of toilet products, parts, and accessories. PO Resp. 6. We adopt Patent Owner’s proposed definition of a POSITA, as it is consistent with the ’698 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, we see no material difference between the level of skill proposed by Patent Owner and that proposed by Petitioner and Dr. Cameron such that our determinations would be the same under either proposed level of skill.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“Patent Owner asserts that, because each of the Flow Limitations relate to water flow through the bowl fill valve, these limitations require adjusting the flow rate of water exiting the flow valve. PO Resp. 15–17 (citing Ex. 2013 ¶ 97); See also PO Sur-Reply 7. Petitioner responds that “the claim language of the ’698 Patent discusses adjusting the water flow, not specifically the ‘flow rate.’” Pet. Reply 13. We are not persuaded by Patent Owner, and the conclusory testimony of Mr. Jobin (Ex. 2013 ¶ 97), that because the Flow Limitations “relate” to water flow through the bowl fill valve, that this necessarily means that the flow rate must be adjusted. As Petitioner points out, neither the term “flowrate” nor any similar term appears in any of the Flow Limitations. Thus, the plain language of the Flow Limitations requires that, contrary to Patent Owner’s position, the claim limitation should not be restricted to adjustments to “flow rate.”” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that Limitations 8B and 12B are directed to the configuration or structure of the bowl fill valve outlet port. Pet. Reply 2–4. According to Petitioner, because Limitations 8B and 12B do recite an overflow tube, the overflow tube is not separately claimed and is recited solely to define the function of the outlet port on the bowl fill valve. Id. at 3. Petitioner, thus, argues that an overflow tube is not separately claimed as a structural element, and that, to meet Limitations 8B and 12B, it is sufficient to show that the prior art discloses a bowl fill valve with an outlet port that is configured to attach directly to a tube that provides water from the outlet port to an overflow tube. Id. at 4. In contrast, Patent Owner argues that Limitations 8B and 12B separately claim the overflow tube, and that Petitioner must show that the prior art discloses a tube that transfers water from the bowl fill valve outlet port to the toilet tank overflow tube. PO Resp. 10–11; PO Sur-reply 2–3. We disagree with Patent Owner, because claims 8 and 12, on their face, require “bowl fill valve outlet port,” but do not require or recite an “overflow tube” as an element of the claimed “bowl fill valve.” When a structure is claimed as “configured to” perform a particular function, it generally requires a structure that is designed to perform the particular function claimed, i.e., it requires more than the mere capability of performing that function. See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (claim language including the phrase “adapted to” is to be construed consistent with “configured to” language and requires that the structure must be “designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose.”); see also In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). The plain language of Limitations 8B and 12B is clearly directed to the configuration of the bowl fill valve outlet port, in that these limitations recite “a bowl fill valve outlet port configured to.”8 The recited function is “attach directly to a tube that provides water from the bowl fill valve outlet port to an overflow tube.” The overflow tube is recited as part of the function in a clause identifying the tube to which the bowl fill valve outlet port is configured to attached — “that provides water from the bowl fill valve outlet port to an overflow tube.” The overflow tube, thus, is recited as part of the function defining the required structure of the bowl fill outlet port and is not separately claimed.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“1. Petitioner’s Contentions Petitioner contends that the combination of Guoxin, Ho, and the Quick Connection Art teaches all of the limitations of claims 1–14 and provides a mapping showing where each claim limitation is found in the prior art. Pet. 21–59. We have reviewed the Petition’s mapping and determine that the Petition sufficiently shows that each limitation of claims 1–14 is disclosed by the combination of Guoxin, Ho, and the Quick Connection Art. Further, we have reviewed Petitioner’s rationale for combining the prior art and determine that the Petition sufficiently shows that it would have been obvious to a POSITA to combine Guoxin, Ho, and the Quick Connection Art.” slip op. at 23
Patent outcomesUS 10,934,698 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,934,698 - Fluidmaster, Inc. v. Danco, Inc.Some claims unpatentablePTAB · Mar 5, 2026 · IPR2024-00634 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1, 3, 8–13, 15, 16, and 19–24 are unpatentable over Brown and Ho, with claims 16 and 19 also relying on the Quick Connection Art; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner proposes that: A [person of ordinary skill in the art (“POSITA”)] in the field to which the ’105 Patent is directed would have had at least a Bachelor of Science degree in mechanical engineering or a related field or, as a substitute, at least two years of work or” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “integrally molded with” as “molded together as a single structure.” Paper 21, 15.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner responds that: a POSITA would not have been motivated to make the proposed modification, nor does the Petition include any analysis regarding why a POSITA would be motivated to move from a vertical extended portion to a radial extended portion. Indeed, a radial extended portion is directly counter to the stated goals of Brown (e.g., reducing noise caused by turbulence), at least insofar as it introduces another sudden directional change into the fluid flow system. PO Resp. 58–59 (citing Ex. 2013 ¶ 242).” slip op. at 32
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Patent Owner argues that the ’105 patent claims were “fully supported as of the filing date of at least the ’606 Application . . . March 11, 2004” because the ’606 Application discloses regulating water flow and a POSITA would know that appropriate devices for regulating water flow includes nonadjustable waterflow restrictors. PO Resp. 63–65; PO Sur-reply 26–29. Patent Owner’s argument is persuasive. The ’606 Application discloses: [W]hen the toilet fill valve 100 is open and water flows from the water inlet 103 to the water outlets 106 and into a toilet tank, an amount of water is also supplied to the bowl fill valve inlet 113 that flows through the bowl fill valve 109 and out the bowl fill valve outlet 116. By virtue of the manual setting of handle 119 of the bowl fill valve 109, the flow of water through the bowl fill valve 109 is regulated. In this manner, the flow of water is regulated so that enough water flows out of the bowl fill valve 109 to fill a toilet bowl without wasting any water down a drain. seen from the passage above, the ’606 Application discloses regulating an amount of water supplied to a toilet bowl using a valve (i.e., a water flow regulator). Ex. 2013 ¶ 288. Further, the ’606 Application states: The bowl fill valve 109 may be, for example, a ball valve, a gate valve, a globe valve, a plug valve, a diaphragm valve, a butterfly valve, a needle valve, a sliding gate, a quick turn valve, a knife valve or any other appropriate type of valve as can be appreciated by those with ordinary skill in the art.” slip op. at 42
Patent outcomesUS 9,103,105 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,103,105 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2025-00749 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)).” slip op. at 49
Patent outcomesUS 9,671,328 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,671,328 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. Ex. 1001, 5:52–60. Thus, the ’328 patent discloses concurrently detecting objects of interest (road signs) and determining whether the object of interest has a particular color value. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30
- Expert testimonyPatent owner expert discountedOther
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
Patent outcomesUS 9,671,328 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,671,328 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.No claims unpatentablePTAB · Jan 23, 2026 · IPR2025-00748 · APJ Sean P O’Hanlon · IPR · Final written decision
Claim 15 was not shown unpatentable under § 103 over Gallagher and Lumia because Petitioner did not persuasively explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. As noted by Petitioner, Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 23. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, we determine that no construction of any term is necessary. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not articulated persuasive reasoning for combining the teachings of Gallagher and Lumia. Petitioner argues that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels for countries that require a minimum retroreflectivity level for road markers. Pet. 46 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 49, 77; Ex. 1019, 6, 8–11).7 However, Gallagher already discloses determining whether the 7 Petitioner and Dr. Thorpe cite to the original pagination of Exhibit 1019 rather than the added exhibit pagination. reflectance level of each road marker meets a predetermined minimum acceptable reflectance level and tagging those road markers that do not meet the minimum acceptable reflectance level to identify them for replacement. See, e.g., Ex. 1005 ¶¶ 3, 67–68; see also id. ¶¶ 12–13, 18, 21, 49, 51, 76, 79, Fig. 5. Indeed, both Petitioner and Dr. Thorpe describe Gallagher’s system as ensuring that road markers meet minimum retroreflectivity standards: “Gallagher’s apparatus tests ‘road markings and road markers such as, for example, road signs and posts, reflective painted lines whether continuous or broken, and . . . raised pavement markers’ ‘to ensure they continue to meet minimum standards of reflectivity/retroreflectivity.’” Pet. 9 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33); Ex. 1003 ¶ 55 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33). Thus, we agree with Patent Owner that Petitioner has not identified persuasively why an ordinarily skilled artisan would have modified Gallagher’s system to include Lumia’s process for measuring retroreflectivity of traffic signs.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“coefficient of luminous intensity rather than the coefficient of retroreflectivity, and Lumia teaches how to calculate retroreflectivity based on the coefficient of luminance intensity. Pet. Reply 20–21. During the hearing, counsel for Petitioner clarified that this reliance on Lumia entails using the equations disclosed in Lumia without altering Gallagher’s hardware. Tr. 27:18–29:24. During his deposition , Dr. Thorpe confirmed that this obviousness theory relies only on Lumia’s equations. See Ex. 2025, 60:5–65:2. This is an improper new argument. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”). Notably, this new obviousness theory appears to stem from Patent Owner’s witness, Dr. Papanikolopoulos, noting differences in Gallagher’s and Lumia’s disclosures. See Pet. Reply 21 (citing Ex. 2023 ¶¶ 71 n.2, 89). Even considering Petitioner’s new theory, we find it unpersuasive because Petitioner does not explain adequately how the “determining a luminance value” recitation is met. Per Petitioner, Gallagher measures the coefficient of luminous intensity, but Petitioner does not identify a “luminance value” as recited in claim 15. Dr. Papanikolopoulos testifies that the coefficient of luminous intensity is not a luminance value: “As is well established, coefficient of luminous intensity—which is what Gallagher calculates—is a measurement of retroreflectivity (usually expressed in units of candelas, or millicandelas, per lux per square meter, i.e., cd/lx/m2), not luminance (usually expressed in candelas per square meter, i.e., cd/m2). Ex. 2023 ¶ 91. Petitioner’s witness, Dr. Thorpe, does not contest this testimony. See, e.g., Ex. 1030 ¶ 35. Thus, Petitioner’s new theory is unpersuasive.” slip op. at 20
Patent outcomesUS 9,335,255 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,335,255 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.No claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Final written decision
Claim 15 was not shown unpatentable under § 103 over Gallagher and Lumia because Petitioner did not persuasively explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. As noted by Petitioner, Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 23. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, we determine that no construction of any term is necessary. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not articulated persuasive reasoning for combining the teachings of Gallagher and Lumia. Petitioner argues that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels for countries that require a minimum retroreflectivity level for road markers. Pet. 46 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 49, 77; Ex. 1019, 6, 8–11).7 However, Gallagher already discloses determining whether the 7 Petitioner and Dr. Thorpe cite to the original pagination of Exhibit 1019 rather than the added exhibit pagination. reflectance level of each road marker meets a predetermined minimum acceptable reflectance level and tagging those road markers that do not meet the minimum acceptable reflectance level to identify them for replacement. See, e.g., Ex. 1005 ¶¶ 3, 67–68; see also id. ¶¶ 12–13, 18, 21, 49, 51, 76, 79, Fig. 5. Indeed, both Petitioner and Dr. Thorpe describe Gallagher’s system as ensuring that road markers meet minimum retroreflectivity standards: “Gallagher’s apparatus tests ‘road markings and road markers such as, for example, road signs and posts, reflective painted lines whether continuous or broken, and . . . raised pavement markers’ ‘to ensure they continue to meet minimum standards of reflectivity/retroreflectivity.’” Pet. 9 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33); Ex. 1003 ¶ 55 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33). Thus, we agree with Patent Owner that Petitioner has not identified persuasively why an ordinarily skilled artisan would have modified Gallagher’s system to include Lumia’s process for measuring retroreflectivity of traffic signs.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“coefficient of luminous intensity rather than the coefficient of retroreflectivity, and Lumia teaches how to calculate retroreflectivity based on the coefficient of luminance intensity. Pet. Reply 20–21. During the hearing, counsel for Petitioner clarified that this reliance on Lumia entails using the equations disclosed in Lumia without altering Gallagher’s hardware. Tr. 27:18–29:24. During his deposition , Dr. Thorpe confirmed that this obviousness theory relies only on Lumia’s equations. See Ex. 2025, 60:5–65:2. This is an improper new argument. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”). Notably, this new obviousness theory appears to stem from Patent Owner’s witness, Dr. Papanikolopoulos, noting differences in Gallagher’s and Lumia’s disclosures. See Pet. Reply 21 (citing Ex. 2023 ¶¶ 71 n.2, 89).” slip op. at 20
Patent outcomesUS 9,335,255 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,335,255 - Provisur Technologies, Inc. v. Weber Food Technology GmbHAll claims unpatentablePTAB · May 28, 2025 · IPR2024-00235 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–6, 8, 10, and 14–16 are unpatentable as anticipated by Young and obvious over Young and Norrie; the Johnson and Belk ground was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Provisur proposes that one of ordinary skill in the art would have had: (1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field); or (2) at least seven years of experience working as an engineer (or similar role) on food processing and/or packaging systems (or in a similar field). Pet. 12. Weber does not contest Provisur’s framing of the level of ordinary skill in the art. See generally PO Resp. There being no dispute, we adopt Provisur’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Provisur construes the claim terms “according to their plain and ordinary meanings as understood by a [person of ordinary skill in the art] in view of the specification and prosecution history” and posits that “[n]o terms require an explicit construction to resolve the unpatentability controversy between the parties here.” Pet. 13. Weber appears to agree, stating in the related district court action that “most of [its] patent claims are plain and ordinary . . . [t]hey’re not difficult or complex claims or claim terms.” Ex. 3 US 5,514,032, issued May 7, 1996 (Ex. 1004, “Young”). 4 US 4,979,269, issued Dec. 25, 1990 (Ex. 1005, “Norrie”). 5 US 6,929,540 B2, issued Aug. 16, 2005 (Ex. 1006, “Johnson”). 6 US 6,198,834 B1, issued Mar. 6, 2001 (Ex. 1007, “Belk”). 1028, 5. This being the case, we do not find the need to expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (confirming that the Board need not construe claim terms where their construction is not material to the dispute).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“without first determining how much fat existed to begin with, i.e., prior to the side of meat being trimmed. But, as Provisur correctly notes, Weber ignores what one skilled in the art reasonably would have understood from reading Young’s disclosure as a whole. See Pet. 30–36 (citing Ex. 1003 ¶¶ 104–106, 109–112); Pet. Reply 2–12. When that is done, one skilled in the art would have understood that a necessary premise of Young’s determination of the thickness of fat to remain on the loin is knowing the thickness of the fat to begin with, which Young’s imaging system 190 and imaging processing routine 240 determine by first analyzing a series of “fat/lean separation lines” and “edge lines” in the side of meat being trimmed. Pet. 30–32 (citing Ex. 1004, 17:34–62, 18:33–56, 22:53–24:38, Figs. 2, 13); Pet. Reply 3–7 (citing portions of same evidence). More specifically, as described in Young (and articulated by Provisur), the side of meat is placed fat side down on a product support, i.e., platen 20. See Ex. 1004, 7:16–21, Figs. 1, 2. Using several cameras—top plan camera 196, end view camera 197, and fat line camera 198—Young’s imaging system 190 acquires multiple images of the side of meat from various angles and under various lighting conditions to “provide image data regarding each side of [meat].” See id. at 17:34–18:56. That image data is then used by Young’s image processing routine 240 to generate a series of demarcation lines on the side of meat, including: (1) fat/lean separation lines (representing the interface between the loin meat and the fat layer along top, side, and end views of the meat product; and (2) edge lines (representing lines along the outer surface of the meat product). See id. at 22:53–23:67, Figs. 10, 13 (Blocks 242, 246, 250, 254). In addition, “a plurality of points (preferably 20) are generated for each of the fat/lean separation and edge lines using known pattern matching routines.” Id. at 23:28–30, Fig. 13 (Blocks 244, 248, 252, 256); see also id. at 23:61–63 (essentially same). The fat/lean separation and edge lines (and points therein) generated by Young’s image processing routine 240 are then used to calculate certain dimensions and characteristics of the side of meat, such as height, length, and width. Id. at 24:10–22, Fig. 13 (Block 258). As Provisur’s expert credibly testifies, one skilled in the art would have understood that the dimension from the fat/lean separation line to the edge line along the outer surface represents the thickness of fat cover on the side of meat, i.e., before the fat is trimmed. See Ex. 1003 ¶ 106. Insofar as how that dimension is used, Young states that controller 172 uses “dynamic (real time) image data” of the fat/lean separation and edge lines “to dynamically modify the cutting profile of the loin knife assembly 100 so that the assembly follows a fixed distance from the separation line to provide the optimum fat cover for the loin.” Ex. 1004, 18:32–45; see also id. at 17:48–52 (describing “real time processor” for “image processing routines”). Notably, according to Young, the “fixed distance” represents the “desired” thickness of fat that remains on the loin, after trimming, and “sufficiently keeps the loin from drying out, but doesn’t make the loin look too fat,” although “[o]ther fat thicknesses may be desired in the alternative.” Id. at 20:60–66; see also id. at 10:39–42 (“Through control of the knife blade along several axes, assembly 100 preferably produces an optimum separation between loin and belly, with a desired fat covering left on the loin.” (emphases added)). Because the desired thickness of fat cover is what remains on the loin” slip op. at 9
- Strike new argumentNew argument consideredDecided for patent owner
“argument that Weber considers vital to its dispute of Provisur’s showing for the claimed fat thickness determination. During oral hearing, Weber repeatedly argued that Provisur changed theories midstream, i.e., between the time of the petition and the hearing. See Hrg. Tr. 22:18–24:47; see also id. at 31:14–22, 33:8–18, 34:16–20, 49:17–50:15, 54:16–56:25 (repeating same argument). More specifically, according to Weber, Provisur originally relied only on image data from Young’s “top view” camera as processed in “block 246” of Young’s image processing routine 240 when showing how Young meets the claimed fat thickness determination, whereas now Provisur relies on image data from Young’s “end view” cameras as processed in “Block 254.” Compare PO Sur-Reply 3–6 (focusing on Young’s “top view camera” in “block 246”), with Hrg. Tr. 27:4–16 (“[Block] 246, which is what they relied on, is processing images from the top-view camera in Young’s system. It is generating lines from the top-view camera in Young’s system. What they are newly trying to rely on today, for the first time, is Block 254 that is discussed toward the bottom of column 23 in Young, and that analyzes different images from a different camera. It is the end camera. It generates different lines. It demonstrates an end fat/lean line and an end edge line. Prior to today’s hearing, neither Petitioner, nor its expert, had ever discussed Block 254. You will not find a single reference to 254 in their papers, nor have they discussed the end edge line. It is completely new today. It finds absolutely no support in the record.” (emphases added)). We disagree with Weber’s contention. As shown and described in the petition, Provisur relies on more than simply Young’s “top view” camera and “block 246.” See Pet. 29–31. Rather, in its petition, Provisur annotates Young’s Figure 2 to show that image data from all three cameras of “imaging system 190”—“top plan camera 196, end view camera 197, [and] fat line camera 198”—play a role in the determination of fat thickness.8 Id. at 30. Moreover, Provisur cites the entire process depicted in “Figure 13” and described in columns “22:53–24:38” of Young as critical to the determination. Id. at 31. Those cited portions of Young involve not only the analysis of fat/lean and edge lines from “top view” images (block 246), but also the analysis of fat/lean and edge lines from “end view” images (blocks 250 and 254). See Ex. 1004, 23:12–24:13. In other words, Provisur’s showing for the claimed fat thickness determination is based on Young’s collective analysis of all those images. Indeed, Provisur’s expert confirms as much when confronted by Weber on cross-examination— Q. How does [Young] use the other cameras to identify that fat/lean separation line? A. Again, this is a -- this is a three-dimensional product that’s not regular, and all the views basically are needed to be able to describe that complex three-dimensional shape, so that the knife will be able to cut at that -- at that line, offset by whatever desired thickness there is, on that three-dimensional shape. Ex. 2006, 25:15–27:19 (emphasis added). 8 Indeed, contrary to Weber’s assertion, Provisur highlights “fat lean separation camera 198,” not top view camera 196, as most critical to the determination of fat thickness. Pet. 31. In the end, we reject the notion that Provisur changed theories” slip op. at 12
Patent outcomesUS 8,529,321 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,529,321 - Digital Global Systems, Inc. v. Deepsig Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00194 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood for the remaining claims except claim 13, whose potential success did not justify instituting trial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent and at least two years of experience working with radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 16. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of prevailing in showing that claims 4–6, 12, 14, and 16–22 would have been obvious over Jüschke and Holt. Petitioner may satisfy its burden for claim 13, but, as discussed below, that would not impact our decision to exercise our discretion under § 314(a) to deny institution. See Section II.F.” slip op. at 16
- Other 314aInstitution denied discretionary otherInstitution denied
“inter partes review. SAS Inst. v. Iancu, 584 U.S. 357, 366 (2018). Specifically, “[i]f a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, . . . the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide, 64 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Here, thirteen challenged claims remain after Patent Owner’s statutory disclaimer. Petitioner at most demonstrates a reasonable likelihood of prevailing for one dependent claim, which has no claims depending therefrom. See Sections II.C–II.E. Thus, based on the particular facts of this case, we find that instituting trial would not be an efficient use of the Board’s time and resources, and we exercise our discretion to deny institution under § 314(a). See Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,777,540 - PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2
- 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). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,094,868 - Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255
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.