- Samsung Electronics Co., Ltd v. Mojo Mobility Inc.All claims unpatentablePTAB · Jan 2, 2025 · IPR2023-01090 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 8, 13, and 15–18 are unpatentable under § 103 over the Fells-based combinations set out in the grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner has not proposed a level of ordinary skill in the art. Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 13) adopting Petitioner’s proposal was incorrect, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“charger surface, to inductively transfer power to the receiver [of the first mobile device],” as recited in limitation 1(k). Pet. 5 (bolding omitted). Petitioner contends this term should be construed as a means-plus-function term, and that the underlined portion identified above identifies the function. Id. at 5–6. Petitioner contends that the corresponding structure is described in the Specification and in dependent claims 24 and 25. Id. at 6 (citing Ex. 1001, 14:35–38 (“[T]he charger and or receiver can include means to provide more precise alignment between the charger and receiver coils and antennas. These can include visual, physical, or magnetic means to assist the user in alignment of parts.”); 25:56–63 (claim 24: “the means for position includes one or more magnets to position the receiver in the power transfer position”, claim 25: “means for positioning includes one or more members of a group consistent of visual, physical, or magnetic means to assist in the positioning the receiver in the power transfer position.”)). Patent Owner does not contest Petitioner’s position on this term. See PO Resp. Our Decision does not require an express construction of any particular claim terms. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
- BurdenFwd all claims unpatentableUnpatentable
“Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on which we instituted trial. Petitioner has the burden of proving unpatentability of a claim by a preponderance of the evidence. 35 U.S.C. § 316(e). As stated above, Patent Owner does not contest Petitioner’s contentions. We have reviewed Petitioner’s contentions and conclude that they show, by a preponderance of the evidence, that claims 8, 13, and 15–18 of the ’349 patent are unpatentable.” slip op. at 3
- Expert testimonyOther
“[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (emphasis added). This is the standard I previously applied to Petitioner’s Ground 1 challenge to claim 17. Inst. Dec. (Fitzpatrick, J., concurring at 2). During trial, all of Petitioner’s challenges went unrebutted, including Petitioner’s Ground 1 challenge to claim 17. See PO Resp. 1 (Patent Owner “elects to not proffer additional argument on the papers or through any hearings that may occur in this proceeding.”). Thus, because I previously determined Petitioner’s Ground 1 challenge to claim 17 presented compelling merits and because Patent Owner did not rebut that challenge during trial, I conclude that Petitioner has necessarily met its burden of proving claim 17 unpatentable by a preponderance of the evidence. slip op. at 46
Patent outcomesUS 11,292,349 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,292,349 - Samsung Electronics Co., Ltd v. Mojo Mobility Inc.All claims unpatentablePTAB · Jan 2, 2025 · IPR2023-01089 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 4, 5, 7, 10–12, and 26 are unpatentable as obvious over the Fells-based grounds; the Board adopted the unrebutted petition analyses.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 3–4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner has not proposed a level of ordinary skill in the art. See PO Resp. Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 12) adopting Petitioner’s proposal was incorrect, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner does not contest Petitioner’s position on this term. See PO Resp. Our decision does not require an express construction of any particular claim terms. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Expert testimonyPetitioner expert creditedOther
“obvious over Fells. Pet. 7–76. Patent Owner does not dispute Petitioner’s contentions. See PO Resp. Having considered the arguments and evidence before us, we find that Petitioner has shown, by a preponderance of the evidence, that claims 1, 5, 7, 10–12, and 26 would have been obvious over Fells. We agree with and adopt Petitioner’s contentions as our own.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 12
Patent outcomesUS 11,292,349 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,292,349 - Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00874 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show Bansal's claimed light intensity arrangement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016)). Obviousness grounds must be supported with “articulated reasoning with some rational underpinning” and not by “mere conclusory statements.” See KSR Int’l Co., 550 U.S at 418. slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“agree with Patent Owner that Petitioner has not sufficiently shown for institution that Bansal teaches or suggests arranging light sources “such that a higher intensity of light is emitted proximate the second edges compared to the intensity of light emitted not proximate the second edges,” as required by the challenged claims. Instead, Petitioner demonstrates how Bansal describes varying the density of light source distribution throughout the array to provide a higher density of light in the entire peripheral area of the array, which includes the areas proximal to both the first and second edges, as compared to the central area of the array. See Pet. 36–37; Ex. 1005 ¶ 25. In this regard, Petitioner relies on Bansal’s Figure 9b, asserting that it “shows one embodiment where more light sources are placed near the edges of the panel compared to the light sources in the center.” Pet. 36–37. The comparison of Bansal’s light density between the entire periphery and the central area of the array is insufficient. What is missing from Petitioner’s argument and discussion of Bansal is how Bansal teaches or suggests a configuration that provides a higher density of light proximate to the second shorter edges of the periphery in comparison to the remaining areas of the array, which includes the first longer edges of the periphery. Without that discussion, we find that Petitioner has not shown sufficient for institution that Bansal is persuasively relied upon for the light source arrangement limitation of the challenged claims. likelihood of prevailing in its obviousness challenge of independent claims 1, 5, 16, 20, or 21, or dependent claims 2, 4, 6–8, and 17–19 over Larsen, Bansal, and Jones.” slip op. at 17
- Skill levelOther
“would have had at least a Bachelor of Science in electrical engineering, physics, biomedical engineering, computer engineering, chemical engineering, material science, or a related scientific or engineering field, and at least one year of work or research experience in optics, optoelectronics, radiometry, photometry, photodynamic diagnosis (PD), photodynamic therapy (PDT), phototherapy (PT), or a related field. Pet. 8. Petitioner asserts that, alternatively, a “POSITA in the relevant time frame would have had at least four years of industry or academic experience in optics, optoelectronics, radiometry, photometry, PD, PDT, PT, or a related field.” Id. (citing Ex. 1003 ¶ 37). According to Patent Owner, a person of ordinary skill in the art at the time the application for the ’028 patent was filed, “would have had a M.D. and/or a Ph.D. in an electrical engineering, physics, optical sciences, optical engineering, or a related scientific or engineering field, and at least one to two years of work or research experience in optical engineering, optics, optoelectronics, phototherapy (‘PT’), PDT, or a related field.” Prelim. Resp. 16. Patent Owner asserts that, “[a]lternatively, a POSITA could have a Bachelor’s degree in one of the above areas and at least three to four years of work or research experience in that area.” Id. (citing Ex. 2001 ¶¶ 30–31). We note that the parties’ proposed definitions are largely similar. To the extent that the proposed definitions differ, we do not need to resolve those differences as our findings and conclusion in this Decision would be the same under any of the proposed definitions.” slip op. at 9
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,697,028 - PTAB · Oct 28, 2024 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Valve would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user.” Prelim. Resp. 13 (citing Ex. 2001 ¶ 33). Patent Owner also argues that formal education could substitute for practical experience, and vice versa. Id. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision because it is sufficiently persuasive to meet Petitioner’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we disagree with Patent Owner that the term defining in claim 1 requires that the recited position and range information must be user-modifiable. Although claims 8 and 15 (not claim 1) recite a “program comprising instructions for . . . defining position and range information,” nothing in these claims explicitly requires that this program has any interaction with a user. Ex. 1001, 14:24–25, 14:64–65. Also, although the ’907 patent disclosure refers to computer architecture components for rendering a haptic effect within a boundary range, Patent Owner has not pointed to any disclosure in the ’907 patent suggesting that range settings must be user-modifiable. The ’907 patent does refer to “trigger data” that is “based on user input data,” but this trigger data appears to be collected by firmware, suggesting that the user’s involvement in creating trigger data consists of simply pulling or pushing the triggers of the controller. See Ex. 1001, 7:1–6, 8:10–16 (trigger data is “received from [the] controller . . . by peripheral firmware”), 8:58–65 (trigger data is obtained from potentiometers in the controller and sent to peripheral firmware), Fig. 3 (showing “[t]rigger data” 323 as part of peripheral firmware 320). Further, the ’907 patent discloses that the primary and secondary ranges at least “may be fixed or variable.” Ex. 1001, 5:29–30. This suggests that an embodiment in which all the range information is fixed (i.e., unalterable by a user) would be within the scope of the claimed invention. As to Patent Owner’s argument that defining would exclude something that is pre-defined, Patent Owner provides no evidence of this in the ’907 patent, its prosecution history, or extrinsic evidence. We find the proposition that something “pre-defined” is not “defined” illogical, and we” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,627,907 - Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution deniedPTAB · Oct 25, 2024 · IPR2024-00970 · APJ William V Saindon · IPR · Institution
Institution was denied for claims 1–11 because the petition did not sufficiently explain why a skilled artisan would combine TUKATECH’s features with EZBRUSH.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Similarly, Petitioner asserts that adding “TUKATECH’s suggested techniques” to EZBRUSH “would be merely the application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43 (citing Ex. 1003 ¶ 62). Petitioner asserts that a person of ordinary skill in the art “would have recognized that applying the suggested user interface improvement from TUKATECH to EZBRUSH’s CAD system would have led to predictable and helpful results with a reasonable expectation of success.” Id. (citing Ex. 1003 ¶ 62). Similar to the discussion above, we have reviewed the cited paragraph of Petitioner’s expert’s declaration and find insufficient credible evidence supporting Petitioner’s naked assertions regarding what was an “application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43; Ex. 1003 ¶ 62. To the extent Petitioner is arguing that obviousness can be established merely by showing that EZBRUSH and TUKATECH are in the same field of endeavor (e.g., Pet. 43 (“both [are] directed toward CAD systems”)), we disagree. We are not aware of any authority supporting such an argument. Petitioner has not sufficiently explained why or how it would have been obvious to apply the length comparison information from the table of TUKATECH’s size reshaping feature to EZBRUSH in a manner that meets each step of the claim. Thus, Petitioner’s additional reasons for modifying EZBRUSH to implement TUKATECH’s sizing table are also untenable.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Under 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,733,773 - Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution deniedPTAB · Oct 25, 2024 · IPR2024-00967 · APJ William V Saindon · IPR · Institution
The Board denied institution because Petitioner did not show why a skilled artisan would have combined Niterra’s wire-length features with EZBRUSH’s clothing design software.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The expert provides no citation for his “smooth seam” rationale. Moreover, Petitioner’s expert, who has extensive knowledge in CAD drawing systems (e.g., id. ¶ 3), does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statement, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “smooth seam” rationale no weight. For this reason, Petitioner’s obviousness position is untenable. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“asserts that it would have been obvious to add these features from Niterra’s circuit board designer into the clothing designer of EZBRUSH. Pet. 45–50. Petitioner asserts that the reason to do so is because “it would have been desirable to select the sewing segments to be equal in length when seeking a clean, smooth seam that prevents bunching or unintended stretching of the material.” Id. at 45 (citing Ex. 1003 ¶ 64). Petitioner then goes on to explain various benefits from adding these “smooth seam” features. Id. at 46–50. Patent Owner argues that “[Petitioner’s] rationale is completely rooted in hindsight” because nothing in the prior art describes a desire to seek a smooth seam. Prelim. Resp. 69. Turning back to the Petition, we see that Petitioner’s “smooth seam” rationale is underpinned by a citation to its expert declaration. Pet. 45 (citing Ex. 1003 ¶ 64). The expert, in turn, repeats the language from the Petition, but provides no explanation as to the underlying facts or data on which his opinion is based. He states: A [person of ordinary skill in the art] would have known that when using the resulting CAD system (EZBRUSH as modified by Corel and Thoemmes (detailed above)) to digitally “sew” two garment patterns together, selecting the sewing segments to be equal in length would have been desirable when seeking a clean, smooth seam that prevents bunching or unintended stretching of the material. Ex. 1003 ¶ 64.” slip op. at 9
- Skill levelNot reached
“B. Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art as of the Critical Date (“POSITA”) would have had a minimum of a bachelor’s degree in an engineering, computer science, graphic design, or a related field plus 2–3 years of work and/or research experience in the field of computer aided design (CAD) software. [Ex. ]1003, ¶23. Graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. Pet. 21. Patent Owner proposes a different standard: A [person of ordinary skill in the art] to which the ’355 Patent pertains would have had a minimum of a bachelor’s degree in mechanical engineering, textile engineering, computer engineering, computer science, graphic design, or an equivalent degree, with at least 2–3 years of experience in software design for the creation of digital or virtual clothing. EX2001, ¶56. Prelim. Resp. 33. Notably, Patent Owner argues that the level of ordinary skill in the art includes experience specific to digital or virtual clothing and that Petitioner has omitted this critical aspect. Id. at 32. We need not define explicitly the level of ordinary skill in the art because Petitioner would fail to meet its evidentiary burden regardless of the definition of the level of skill adopted.” slip op. at 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,410,355 - PTAB · Oct 25, 2024 · IPR2024-00980 · APJ Lisa A Murray · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving them obvious over Grinspun and Graphicxtras.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims of the ’448 Patent. We thus determine not to institute an inter partes review of any of the challenged claims on any of the grounds alleged in the Petition. A. Real Parties in Interest” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties agree that no claim terms need to be construed for the purposes of a Decision on Institution, but disagree as to whether the preamble of method claim 1 is limiting. Petitioner argues that it is not, while Patent Owner argues that statements of intended purpose in the preamble to a method claim are generally construed as limiting. Pet. 31–32 (citing Arctic Cat Inc. v. GEP Power Prods., 919 F.3d 1320, 1328–1330 (Fed. Cir. 2019)); Prelim. Resp. 19 (quoting Eli Lilly and Co. v. Teva Pharma. Int’l GmbH, 8 F.4th 1331, 1340 (Fed Cir. 2021)). We determine that we do not need to resolve this potential claim construction dispute between the parties. See, e.g., 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)). For the reasons discussed below, even if we adopt Petitioner’s position that the preamble of claim 1 is not limiting, Petitioner still has not established a reasonable likelihood of success regarding its challenge to claim 1.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would have had “a minimum of a bachelor’s degree in an engineering, computer science, graphic design, or a related field plus 2–3 years of work and/or research experience in the field of computer aided design (CAD) software.” Pet. 12. Petitioner asserts that “[g]raduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner largely agrees with Petitioner’s proposal, but argues that the relevant experience would have had to have been in “creating computer programs for virtual or digital clothing design” because general CAD software is not suitable for the purposes of virtual clothing design. Prelim. Resp. 18–19. We need not determine which definition is more consistent with the ’448 Patent and the asserted prior art. We have applied Petitioner’s definition in our analysis below. We determine that even under Petitioner’s definition of the level of ordinary skill in the art, Petitioner has not established a reasonable likelihood of success with respect to any of the claims challenged in the Petition, for the reasons discussed below. C. Claim Construction” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“First, Petitioner has not sufficiently shown that either Grinspun or Graphicxtras teach taking measurements “of” a two-dimensional pattern, as described in the preamble of claim 1. See Prelim. Resp. 20–23. Grinspun provides a 2D pattern in its Design Window 110, but does not measure any part of the 2D pattern. Id. at 20; Ex. 1004 at 17, 37–38, Fig. 1; see also Ex. 2001 ¶¶ 76–77 (Govindaraj Decl.). Graphicxtras teaches taking horizontal or vertical measurements between bounding boxes, but does not measure the distance between the actual outlines of the pattern pieces. Ex. 1005 (Graphicxtras); see Ex. 2001 ¶¶ 79–81. Even if the preamble is not considered to be limiting, the fact remains that neither reference discloses measuring a distance within a pattern piece, which is required by the claim language “determining a length of a line segment using the points . . . responsive to determining that the points are located in different pattern pieces[.]” Ex. 1001 at 18:3–4 (emphasis added); see Ex. 2001 ¶¶ 84–85. Second, Petitioner has not shown that either reference, alone or in combination, can determine whether two points are on the same pattern piece or different pattern pieces by affirmatively examining “attributes of areas” in which the points are located. Prelim. Resp. 27–29 (citing Ex. 2001 ¶¶ 87–90). The ’448 Specification indicates that a “measuring apparatus may determine that areas to which the two points A and B belong correspond to different pattern pieces based on the data structure corresponding to each of the two points A and B.” Ex. 1001 at 7:25–40. The data structure corresponding to each of the points may store information corresponding to each of the points in the form of a linked list, a tree, or a table, for example. The information corresponding to each of the points may include, for example, identification information of a pattern piece in which each of the points is positioned, identification of a line in a pattern piece in which each of the points is positioned, a coordinate of a point on a line of a pattern piece, and the like. Id. at 6:63–7:4. This is reflected in claim 1, which contains the limitation “determining a length of a line segment using the points based on the determined attributes of the areas, the determined length of the line segment changed to account for separation between the pattern pieces responsive to determining that the points are located in different pattern pieces[.]” Ex. 1001 at 17:66–18:4. The Grinspun-Graphicxtras combination does not do this. Rather, in the proposed combination the two points A and B are always on the edges of two different pattern pieces, and there is no disclosure of a set of data structures that would enable the proposed software to determine the location of the points in relation to the 2D pattern pieces depicted. Prelim. Resp. 27–29 (citing Ex. 2001 ¶ 90); see Pet. 35 (annotating Figure 1 of Ex. 1004). Third, because the line segment in the proposed combination is always between the edges of two different pattern pieces, the combination does not determine the “length of a line segment using the points based on the determined attributes of the areas” associated with the two points. Prelim. Resp. 41–42 (citing Ex. 2001 ¶¶ 91–93); Ex. 1001 at 17:62–65 (emphasis added); see also Pet. 40, 42, 44 (further annotating Figure 1 of Ex. 1004). Fourth, Petitioner misinterprets the claim language “the determined length of the line segment changed to account for separation between the pattern pieces” and does not does not even address the remainder of that claim element, “responsive to determining that the points are located in different pattern pieces.” See Ex. 1001 at 18:1–4 (emphasis added). This language does not mean that the user manually changes the length of the line segment by moving the pattern pieces. See Pet. 40–44. It means that the portion of the line segment that is in the empty space between the pattern pieces is subtracted, as shown in Figure 4 of the ’448 Patent, in order to determine the measurement of a portion of the 3D clothing to be created from the 2D pattern. Prelim. Resp. 40–41 (citing Ex. 2001 ¶¶ 94–95). We agree with and adopt the explanation of Patent Owner’s expert declarant, Dr. Govindaraj that: [T]he ’448 teaches repeatedly and the claims require that the patterns are fixed relative to one another, that the selected points are fixed, and that the line segments are fixed. The entire purpose of the claimed invention is to measure the length of a line segment in response to determining that the points are located in different pattern pieces, and then accounting for the “white space” or “separation between” the two patterns. Ex. 2001 ¶ 95. Patent Owner raises additional arguments as to why claim 1 would not” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,222,448 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31
Patent outcomesUS 10,129,825 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 10, 2024 · IPR2024-00734 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 3, 15, 17, and 19–21, finding a reasonable likelihood of success on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 3, 15, 17, and 19–21 in the ’518 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have been someone”: (1) “knowledgeable with the computer networking techniques available at the time”; and (2) “who had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of experience working with computer networks, including network security.” Pet. 7. Petitioner also asserts that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Crovella’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 15–16. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’518 patent as well as the asserted references. See Ex. 1003 ¶ 16.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, Petitioner establishes sufficiently for purposes of institution that an ordinarily skilled artisan would have had reasons, i.e., as articulated by Dr. Crovella, to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes. See Pet. 14–21, 27, 29–31, 38; Ex. 1003 ¶¶ 51–58, 62–72, 91–92, 98, 101, 121. Based on the current record, Petitioner also establishes sufficiently that an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of the references. See Pet. 16–17, 22, 38; Ex. 1003 ¶¶ 59–60, 73–74, 121. (f) Preliminary Conclusion About Alleged Obviousness As discussed above, Petitioner’s analysis addresses how the combined disclosures in Gai, Yip, and Kwan teach claim 1’s subject matter. See supra §§ III.D.4(a)–(d). Additionally, Petitioner provides reasons with rational underpinnings as to why an ordinarily skilled artisan would have been motivated to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.D.4(e). Hence, Petitioner demonstrates a reasonable likelihood of proving that claim 1 is unpatentable under § 103(a) because the claim would have been obvious over Gai, Yip, and Kwan.” slip op. at 34
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,623,518
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.