- Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Dec 18, 2025 · PGR2019-00056 · APJ Stacey G White · PGR · Remand
Claims 2–7, 9–19, 21–25, 27, 30, 31, and 33 are unpatentable as obvious; Petitioner did not prove claims 8, 20, 26, 28, 29, and 32 unpatentable.
RulingsRemand decision- RemandMixed
“The Federal Circuit found that “[t]he factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan,” concluding “[n]othing more is required to establish a motivation to combine.” Everstar II, 2025 WL 1501940, 4. The Federal Circuit observed that “Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1,” and accordingly, “reverse[d] the Board’s patentability determination as to that claim and vacate[d] the Board’s judgment as to the remaining claims of the ’037 patent,” remanding to us for further proceedings. Id. at 4–5. With those instructions in mind, we review the Petitioner’s allegations regarding claims 2–33.” slip op. at 6
- Skill levelSkill level board ownDecided for patent owner
“F. Person of Ordinary Skill in the Art In the First Final Written Decision, we determined that a person of ordinary skill in the art “would have (1) at least two years of experience in the design of decorative lighting, or (2) at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Paper 40, 12. We see no reason to depart from that earlier determination.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that we do not need to construe any claim terms. Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner did not dispute that the combined teachings of Kumada and Debladis ’120 disclose each limitation of claim 1. Patent Owner, however, did dispute Petitioner’s proposed reasons for combining Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous art. PO Resp. 36–61. The Federal Circuit stated that substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120. The factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan. Nothing more is required to establish a motivation to combine. Given that Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1, we reverse the Board’s patentability determination as to that claim and vacate the Board’s judgment as to the remaining claims of the ’037 patent. Everstar II, 2025 WL 1501940, 4 (internal citations omitted). The Federal Circuit further noted Patent Owner’s secondary considerations arguments as to claim 1 and stated [t]he cited evidence consists only of a temporal connection between the introduction of Willis’s invention and the UL 588 standards, and deposition testimony of a single witness who seemingly disclaimed any connection between the two. This is not sufficient to rescue a claim as to secondary considerations. Id. at 4, n. 5 (internal citations omitted). Accordingly, the Federal Circuit ruled that claim 1 would have been obvious over Kumada and Debladis ’120. 6. Analysis of Independent Claim 33” slip op. at 17
Patent outcomesUS 10,222,037 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,222,037 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37
Patent outcomesUS 11,010,709 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,010,709 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Mar 18, 2025 · IPR2024-01285 · APJ Nabeel U Khan · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds after finding a reasonable likelihood that claims 1 and 1 were obvious over the Yerazunis–Fiedler and Ely–Fiedler combinations, respectively.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. With these factors and guidance in mind, we consider parties’ contentions.5 1.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . 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.” 35 U.S.C. § 314(a). “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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’752 patent. We exercise our discretion to institute inter partes review and, as required, we do so as to all the challenged claims of the ’752 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Only claim terms in controversy require express construction, “and only to the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need resolve the controversy.”). Having reviewed the parties’ arguments, we determine no terms require express construction to resolve the disputes at this stage of the proceeding.8 A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,928,752 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Mar 18, 2025 · IPR2024-01284 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” 35 U.S.C. § 314(a). Per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’540 patent. We exercise our discretion to institute inter partes review and, as required, we do so as to all the challenged claims of the ’540 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“issued an order temporarily staying all deadlines and hearings scheduled in the matter.6 Ex. 1058, 1–2. The District Court’s order notes that Patent Owner asserts 8 patents in the litigation, that IPRs have been instituted on 4 of those patents covering 10 of the 14 claims asserted in the litigation, and that further consideration of a stay will depend upon whether IPRs are instituted on patents including the 4 remaining claims. Id. at 1, 3. The District Court also ordered the parties to update their positions on a stay within one week of a decision on institution. It is unclear if, and when, a new trial date would be set. In light of this stay, we determine that this factor weighs strongly against discretionary denial. 2.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Ex. 1051 ¶ 30. Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having reviewed the parties’ arguments we determine, as explained further below in our analysis of claim 1 (§ III.D.4.a), that an express construction of the term “file” is not necessary at this stage of the proceeding. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,310,540 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Mar 18, 2025 · IPR2024-01314 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“February 24, 2025, the District Court ordered all deadlines and hearings stayed pending further order of the court. See Ex. 1066. The District Court’s order notes that Patent Owner asserts 8 patents in the litigation, that IPRs have been instituted on 4 of those patents covering 10 of the 14 claims asserted in the litigation, and that further consideration of a stay will depend upon whether IPRs are instituted on patents including the 4 remaining claims. Id. at 1, 3. The District Court also ordered the parties to update their positions on a stay within one week of a decision on institution. It is unclear if, and when, a new trial date would be set. Thus, factors 1 and 2 weigh against exercising discretion to deny institution. The subject matter of the challenged claims is closely related to the subject matter of the claims of the patents in the previously instituted IPRs and the remaining pending petitions, as evidenced by the overlap of the asserted references and arguments advanced in these cases. As detailed in the substantive sections of this Decision, the Petition meets the standard for institution, i.e., there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the Petition. Under Fintiv factor 6, these circumstances weigh against exercising discretion to deny institution. In view of these circumstances, we determine that factors 1, 2, and 6 strongly weigh against exercising discretion to deny institution.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology. Pet. 7 (citing Ex. 1062, Sarhan Decl. ¶¶ 26–30). Petitioner adds that additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. Id. Patent Owner does not comment specifically on the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of an 4U.S. Patent Publication No. 2004/0008255 A1 (Ex. 1019) 5 U.S. Patent Publication No. 2002/0191952 A1 (Ex. 1009) 6 U.S. Patent 5,982,418 (Ex. 1020) 7 Another Declaration of Dr. Sarhan has also been made of record in this proceeding. See Ex. 1003. This Decision distinguishes references to the Sarhan Declarations by Exhibit number. ’910 patent and the references, we apply it for purposes of this Decision. slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“A. A computer processor configured to Petitioner notes that in the parallel litigation Patent Owner contends that this term is not a means plus function limitation. Pet. 9. Petitioner states that for purposes of the petition it has applied means plus function and non-means plus function interpretations to this limitation. Id. For purposes of this Decision, we need not construe this claim limitation. B. File In this proceeding, Petitioner does not propose a construction of the term “file.” See Pet. 9. Patent Owner does not propose a construction of “file” but, nonetheless, states that “Petitioner’s vague and unduly broad definition of ‘file’ is not only contradicted by the prosecution history, but also the extrinsic evidence it relies upon.” Prelim. Resp. 5 (citing Pet. 10– 12). Patent Owner reserves the right to present claim constructions arguments if trial is instituted. Id. at 6. For purposes of this Decision, we address the meaning of “file” in the context of the parties’ substantive arguments and do not articulate a specific construction. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c) Claim 1 Analysis Petitioner has demonstrated that, contrary to Patent Owner’s arguments, Yerazunis discloses write protecting a segment of the buffer. Yerazunis explicitly states that “[upon] a firing event, specified frame data associated with that firing event both before and after the event is preserved and cannot be overwritten as a result of further use of the gun or subsequent of memory to a second portion of memory to avoid overwriting the data in the first portion of memory upon the occurrence of a second trigger event is an effective approach to designating the first portion of memory as write protected. As Petitioner points out, an ordinarily skilled artisan would have understood from Yerazunis that retrieving video data for gun firing events necessitates the ability to locate the relevant video data within the buffer and that using pointers in a table to index the data allows for its later retrieval. Pet. 25 (citing Ex. 1062, Sarhan Decl. ¶ 372). We find unavailing Patent Owner’s argument that Yerazunis’ disclosure of a purge button to erase the contents of the circular buffer is further evidence that that entire buffer contents is protected and unprotected as a whole. Prelim. Resp. 30 (citing Ex. 1017, 9:47–51). It is unclear how providing an “optional” purge feature that erases the contents of the circular buffer and captured still images a “user does not desire to retain” supports Patent Owner’s argument that Yerazunis does not disclose write protecting segments of the buffer associated with a trigger event. Ex. 1017, 9:49–53. Inclusion of this feature further supports Petitioner’s argument, as the segments of a circular buffer associated with an event are not overwritten, unless the user invokes the purge feature to erase the contents of the circular buffer. Also unavailing is Patent Owner’s argument that video data preservation in Yerazunis “is a step that occurs after, not as part of, the step of ‘continu[ing] to record for a brief interval.’” See Prelim. Resp. 30–31. Claim 1 is an apparatus claim and does not recite “continuing to record for a brief interval.” See Ex. 1060, 12:19–47 (claim 1). Claim 1 recites “a computer processor configured to . . . continuing to record the sensor data in designated for saving.” Ex. 1060, 12:22, 34–36. Yerazunis discloses that upon detection of a trigger event a predetermined number of frames, e.g., 2 frames, are stored in successive frame locations within the circular buffer. Ex. 1017, 8:26–32; 12:14–28. Yerazunis further discloses that “any desired percentage of frames may be captured prior to or after the trigger event by specifying how many frames are to be captured and stored after the trigger event.” Id. at 8:39–42.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,965,910 - PTAB · Feb 25, 2025 · IPR2024-01315 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 1 and 3 on all three asserted obviousness grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any 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.” 35 U.S.C. § 314(a). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art “would have had a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design.” Pet. 6 (citing Ex. 1002 ¶¶ 34– 37). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Dean Neikirk. Ex. 1002 ¶¶ 34–37. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. See Prelim. Resp. 1. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7; see Prelim. Resp. 1. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“E. Asserted Obviousness of Claims 1 and 3 over Anzai and Yamazaki Petitioner argues that claims 1 and 3 would have been obvious over Anzai and Yamazaki. Pet. 47–57. Petitioner presents evidence indicating that the Anzai and Yamazaki combination teaches the limitations of claims 1 and 3, and that a person of ordinary skill in the art would have had reason to combine these references. Id. Patent Owner does not present any substantive arguments regarding this asserted ground. See Prelim. Resp. 1. On this record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1 and 3 would have been obvious over Anzai and Yamazaki. F. Asserted Obviousness of Claims 1 and 3 over Anzai and Yamada Petitioner argues that claims 1 and 3 would have been obvious over Anzai and Yamada. Pet. 57–63. Petitioner presents evidence indicating that the Anzai and Yamada combination teaches the limitations of claims 1 and 3, and that a person of ordinary skill in the art would have had reason to combine these references. Id. Patent Owner does not present any substantive arguments regarding this asserted ground. See Prelim. Resp. 1. On this record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1 and 3 would have been obvious over Anzai and Yamada.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,477 - Apple, Inc. v. Omni Medsci Inc.All claims unpatentablePTAB · Feb 14, 2025 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Remand
On remand, the Board determined claims 1–23 unpatentable, finding claims 3–6 and 8–14 obvious under the asserted combinations and leaving the prior findings on other claims intact.
RulingsRemand decision- RemandOther
“No appeal was taken as to claims 1, 2, 7, and 15–23. Consistent with the Federal Circuit’s Mandate, we have reviewed the merits and determine 3–6 and 8–14 are unpatentable, and recognizing that all other claims have previously been determined to be unpatentable, we determine that claims 1–23 are unpatentable.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our mandate is to consider the argument the Court determined we did not consider in the Petitioner Reply, which argument, as each party acknowledges, both parties had the opportunity to discuss in the briefs that are in our current record. Under the circumstances, we determine that no additional briefing is required to carry out that mandate.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Final Decision, we determined that the term “identify an object” in claims 3 and 8 is distinguished from the term “detect an object,” e.g. as in claim 1. Final Dec. 8–10. The Court affirmed our construction of “identify an object” to mean “to recognize or establish an object as being a particular thing.” Fed. Cir. Dec. 10. The Court remanded, however, for further consideration of a “properly raised” argument Petitioner advanced in the Petitioner Reply with respect to our construction, referred to by the Federal Circuit as “the alternative argument.”. Id. at 2, 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner counterargues that it is not required to show why a person of ordinary skill would have considered every permutation of these references together and that it provided specific reasons for including features of Isaacson into Lisogurski’s device. Pet. Sur-reply 24–25. According to Petitioner, a person of ordinary skill would have had reason to incorporate Isaacson’s sensor (an arrangement of LEDs and detectors) into Lisogurski’s device, which taught that any known sensor layout could be used. Id. (citing Ex.1011, 17:39–45; Ex.1003 ¶¶ 239–240). Petitioner further argues that the ordinarily skilled artisan would have looked to Isaacson because it discloses a known arrangement for that the sensor component of Lisogurski’s device, and because it also taught solutions to potential problems identified in Lisogurski (e.g., with skin pigmentation). Id. (citing Pet. 68–69; Ex.1003 ¶ 243; Ex.1063, 7:59–62, Fig. 1).” slip op. at 9
Patent outcomesUS 10,517,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,517,484 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01207 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that at least one claim is unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution on this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 8,692,882; and IPR2024-01208, challenging claims 1–23 of U.S. Patent” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons arguments do not directly address the specific combination proposed by Petitioner nor the specific motivations provided by Petitioner. For example, as explained further below in our analysis of claim 1, the gun embodiment of Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’s video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’s gun implementation in which individual segments are stored in the circular buffer. See Pet. 28 (“Yerazunis does disclose that in a gun camera embodiment, ‘the head pointer 104 and the tail pointer 102 . . . defining the area(s) of the circular buffer memory, are stored in a table to allow later retrieval of the video data pertaining to each firing of the gun.’” (quoting Ex. 1017, 17:50–56)); see also Pet. 30–32, 38–39.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“of Yerazunis in combination with Fiore. On this record, Petitioner has demonstrated the similarities in the data recording systems of Yerazunis and Fiore. Petitioner asserts a reasonably sufficient basis for establishing the “specified frame data associated with [the] firing event” to be preserved as the disclosure of a designated segment that is write-protected. Based on the current record, we find Petitioner’s evidence more persuasive than Patent Owner’s assertion that Yerazunis preserves the entire buffer—not designated segments. Again, Petitioner admits Yerazunis does not expressly refer to “indexing write-protected segments as second files” but further establishes with sufficient basis that a person of ordinary skill in the art would understand the tagging features of Yerazunis aligns with the concept of indexing. Further, Petitioner shows that eventually it will be necessitated to locate or retrieve the data, providing further motivation for indexing, which is not only disclosed in Fiore, but demonstrated as well known in the art. See Pet. 28–29. Petitioner demonstrates the combination of Fiore and thus, on the current record, we are not persuaded by Patent Owner’s argument that Yerazunis only preserves post-recording data. Patent Owner further does not provide sufficient basis of reasoning that the “memory designation scheme” of Yerazunis which uses “unused block[s] of memory” establishes there is no write-protected segment. In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate that person of ordinary skill in the art would have had a rational basis to combine the teachings of Yerazunis and Fiore and this combination teaches these limitations of element 4.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,692,882 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01208 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–23 on all four §103 grounds, finding a reasonable likelihood of success based on Yerazunis or Ely, with Fiore and Lewellen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–17. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 23 (the “challenged claims”) of U.S. Patent No. 9,912,914 B2 (Ex. 1031, “the ’914 patent”). 35 U.S.C. § 311. Stellar LLC (“Patent Owner”) filed a Preliminary Response, Paper 8 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 6, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contentions Concerning Reasons to Combine Teachings of Yerazunis and Fiore Noting that Yerazunis and Fiore both concern recording devices with circular buffers that preserve data before and after a trigger event, Petitioner contends that an ordinarily skilled artisan would have had reason to combine the teachings of the references to incorporate into Yerazunis the benefits Fiore articulates concerning its file-based storage approach in such systems. Pet. 21. Petitioner emphasizes Fiore’s discussion of how implementing a circular buffer as a memory mapped file that indexes event data combines the access speed of the RAM memory with the large capacity of a disk file, making the indexing of data in memory mapped file 110 transparent to the circular buffer’s access objects. Id. at 21–22. Petitioner also emphasizes that an ordinarily skilled artisan would have had a reasonable expectation of success, given Fiore’s detailed disclosure of applying its techniques in a system like that of Yerzunis. Id. at 22 (citing Ex. 1003, Sarhan Decl. ¶¶ 168–172).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) as having “at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003, Sarhan Decl. ¶¶ 24–25). Petitioner further states that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not address the qualifications of a person of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s proposed description of a person of ordinary is commensurate with the subject matter” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,912,914 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01205 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–18. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”:” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . 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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’034 patent and we exercise our discretion to institute inter partes review as to all the challenged claims of the ’034 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons provided by Petitioner and summarized above. Several of Patent Owner’s arguments do not directly address the specific combination proposed by Petitioner nor the specific motivation provided by Petitioner. For example, Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’ video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’ gun implementation in which individual segments are stored in the circular buffer. See Pet. 32 (citing Ex. 1017, 3:25–38, 8:26–30, 15:9–13, 17:48–59).” slip op. at 21
- Skill levelSkill level board ownOther
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003 ¶¶ 24–25). Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 24–25). Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,034
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.