- Samsara Inc. v. Motive Technologies, Inc.No claims unpatentablePTAB · Jul 29, 2026 · IPR2025-00574 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–7 were not shown unpatentable because the asserted combinations did not establish the claimed video overlay and transmission for manual review.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner’s contentions in this ground do not cure the issues for limitations 1D and 1E. Petitioner’s contentions in this ground involve combining Khan and Ali’s teachings of identifying a horizon line and lane lines with Choe. For example, Petitioner argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have combined known elements according to known methods to yield predictable results” and that “[i]mplementing these known mathematical models in Choe’s calibration system, according to their known functions, would have yielded predictable results.” Pet. 39. Petitioner further argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have used a known technique (predictive models) to improve similar devices in the same way” and that “[u]sing predictive models for Choe’s lane and horizon prediction would have also applied a known technique (predictive models) to a known device (a manual annotator device) ready for improvement.” Pet. 40. Petitioner’s proposed combination, therefore, still relies on Choe’s teachings of transmitting an overlaid image to an annotator device. We note that Petitioner asserts that, “[o]nce Khan in view of Ali identifies the horizon and lane lines, it overlays the horizon line and/or lane lines on the video, as shown in the screenshots below.” Pet. 41–42. Although Petitioner mentions Khan and Ali’s teachings with respect to video here, Petitioner does not adequately explain how the teaching of an overlaid video would be combined with Choe’s single image annotator teachings. As discussed above, Choe discloses transmitting a single overlaid image to the annotator” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, Petitioner has not provided sufficient evidence and argument to explain how the additional teachings of Khan and Ali teach limitations 1D and 1E in combination with Choe. Petitioner, therefore, has not demonstrated unpatentability of claims 1–5 by a preponderance of the evidence. F. Obviousness over Choe and Workman (Claims 1–4) Petitioner asserts that claims 1–4 would have been obvious over the combined teachings of Choe and Workman. Pet. 47–52; Pet. Reply 26–30. Petitioner asserts that, “if [Patent Owner] alleges that Choe does not explicitly disclose which predictive models it uses or whether it uses predictive models to identify the horizon line, a [person of ordinary skill in the art] would have searched for references that use predictive models and how such models were used,” which “would have led to Workman, which discloses predictive models to identify the horizon line.” Pet. 47. According to Petitioner, “[u]sing Workman’s predictive model to identify the horizon line would also have merely been combining known elements ([convolutional neural networks (CNNs)] and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way.” Pet. 48–49. Thus, Petitioner relies on Workman to teach a predictive model to identify a horizon line. See Pet. 47–49. Choe with respect to limitations 1D and 1E. Indeed, Workman involves horizon line estimation in single images. See Ex. 1011, 10 (§ 5) (“We introduced Horizon Lines in the Wild (HLW), a new dataset for single image horizon line estimation, to address the limitations of existing horizon line detection datasets.”). Petitioner, therefore, has not demonstrated unpatentability of claims 1–4 by a preponderance of the evidence.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner criticizes Petitioner’s proposed level of ordinary skill for not requiring “any training or experience in ‘automotive systems,’ precisely what the ’580 [p]atent relates to.” PO Resp. 7. According to Patent Owner, a person of ordinary skill in the art would have had “a training and/or experience in design of software for camera/sensor systems in the automotive industry.” PO Resp. 8–9 (citing Ex. 2003 ¶ 35).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. 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 6
Patent outcomesUS 11,875,580 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,875,580 - Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00253 · APJ Scott C Moore · IPR · Final written decision
Claims 1–10 were not shown unpatentable under either § 103 ground because the evidence did not establish a reason to combine the references or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent. D.I. 8. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’035 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Institution Decision, we construed the claim term “string separator character” to mean “a single-character string separator,” and invited the parties to raise any issues they had with this construction in future briefing. D.I. 10. Patent Owner subsequently indicated that it agreed with this construction. See PO Resp. 8. Petitioner did not raise any objections to this construction (see generally Pet. Reply). Accordingly, and in the absence of any dispute, we construe “string separator character” to mean “a single-character string separator.” Neither Petitioner nor Patent Owner ask us to adopt explicit constructions of any other claim terms. See Pet. 14, PO Resp. 8–9; Pet. Reply 1–23; PO Sur-reply 2–7. We also find that the issues in dispute can be resolved without construing any other claim terms. Accordingly, we do not adopt explicit constructions of any other 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)). D.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” See PO Resp. 26–27. Indeed, Petitioner has given little or no explanation of how one of ordinary skill in the art allegedly would have taken the “idea of incremental search” and applied it to Lotus Notes. See, e.g., Ex. 2021, 116:20–117:17 (Petitioner’s declarant, Dr. Terveen, testifying that “Raskin is not explicitly talking about searching across a set of documents, but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin simply does not teach a mode of incremental searching that applies to the query-style, document-finding searching of the type Petitioner cites from Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Mr. Haeberli contrasting the Lotus Notes searches cited by Petitioner with Raskin’s searches). Raskin even states that it is “difficult or impossible to implement incremental searches” using interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Mr. Haeberli’s testimony that this passage of Raskin “directly undermines Dr. Terveen’s suggestion that a POSITA would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 24
Patent outcomesUS 7,370,035 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,370,035 - Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00254 · APJ Lisa A Murray · IPR · Final written decision
Claims 1–20 were not shown unpatentable under either §103 ground because Petitioner failed to establish motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence then of record, including the asserted prior art and the ’490 patent. Dec. 9. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’490 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Decision on Institution, the only term that we found it necessary to construe was the term “string separator character” in claim 1. We preliminarily construed this term to mean “a single-character string separator.” Dec. 11, 30–31. We invited the parties to address the appropriateness of this construction over the course of the trial. Id. at 11, 31. In its briefing, Patent Owner agrees with the Board’s preliminary construction, arguing that it is “consistent with the intrinsic evidence.” PO Resp. 8 (citing Ex. 1001, claims 8 and 20). Patent Owner further argues that a person of ordinary skill would have understood a multi-character Boolean operator such as “AND” to be “a search syntax instruction rather than a string separator.” Id. at 9 (citing Ex. 1059, 162; Ex. 2001 ¶ 112). Petitioner’s Reply Brief does not address the issue of claim construction. See generally Reply Br.; see also Pet. 11 (“Unless otherwise noted, Petitioner applies the plain and ordinary meaning of all claim terms below.”). Following our review of the full record, we determine that it is not necessary to construe this or any other claim term for the purposes of this Decision.2 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.). In our analysis below, we interpret the language of the claims according to its plain and ordinary meaning.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Having reviewed the evidence of record, we find Mr. Haeberli’s testimony to be more persuasive and better supported by the evidence. According to Dr. Terveen, “[r]obust programming languages such as C and C++, together with well-developed operating system and UI frameworks, . . . allowed an ordinary programmer to build a UI that supported incremental searching, as evidenced by the numerous prior art systems that implemented such functionality, including Entourage, Eudora, Emacs, Canon Cat, SwyftWare, and others. Ex. 1100 ¶ 43 (citing Ex. 1004, 8–9, 161; Ex. 1021, 125, 127, 129; Ex. 1039, 102–103; Ex. 1043, 385–389). The relevant question, though, is not whether it would have been possible to build a user interface that supported incremental search, but whether it would have been “simple and straightforward” to execute an incremental search of multiple partial search strings on large, indexed multi-file databases such as those described in the Lotus Notes references, as Dr. Terveen alleges. None of the prior art discussed in the “State of the Art” section of Dr. Terveen’s initial declaration, taken individually or together, discloses incrementally searching a plurality of files using two partial search strings. See Ex. 1003 ¶¶ 32–33, 37, 40; Ex. 2001 ¶ 100. Thus, creating a user interface might be “simple,” but the evidence suggests that the back-end execution of an incremental search is not. See, e.g., Ex. 1021, 126 (Raskin, concluding that “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“different approach from that taken in Lotus Notes. The difference between Raskin’s sequential scanning method and the index-based system described in Wilcox is that sequential scanning by definition can only scan one document at a time as each document is loaded into a “buffer.” See, e.g., Ex. 2020 ¶ 35. Lotus Notes, however, only needs to load the index into memory for a user to be able to locate the single index entry identifying all instances of an indexed term across all indexed files. In fact, Raskin acknowledges that indexing may be necessary to maintain an acceptable response time. Ex. 1021, 132 n.10; see also id. at 129 (indexing speeds search times). Mr. Haeberli’s third and final reason for concluding that one of ordinary skill would not have been motivated to combine Raskin’s incremental search with Lotus Notes is that at the time using incremental searches would have presented “extreme technical difficulties.” Ex. 2001 ¶ 101. Here again we find Mr. Haeberli’s explanation more persuasive than Dr. Terveen’s opinion that combining the teachings from Raskin with Lotus Notes’ teachings “would have required only simple and straightforward software modifications.” Ex. 1003 ¶ 80. According to Mr. Haeberli, “there are serious technical challenges with implementing the complex search strategies of the challenged claims in the systems on which Dr. Terveen relies.” Id. ¶ 96. As Patent Owner argues: searching across a set of files to find specific files requires the system to identify which files are in the set, access those files (which are often not loaded in active memory), search their contents, determine which files contain matches to search criteria, and then present results to the user; all tasks that do not exist in the same way (or at all) for a search confined to text in a single open file already loaded into memory. Sur-Reply 9; see Ex. 2020 ¶¶ 15, 35–36. There would have been other challenges as well. For example, “[t]he type of sequential scanning typically employed to search a single open document is very time and resource intensive if employed to search a large set of documents.” Ex. 2020 ¶ 15. Also, “[i]mplementing incremental search in the Lotus Notes indexed system would necessarily require a larger index, which would slow down, rather than increase the search speed.” PO Resp. 23; see Ex. 2020 ¶ 33. Finally, Raskin itself concludes that “even if incremental searching is advantageous, ‘almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.’” Ex. 2001 ¶ 96 (emphasis added by Mr. Haeberli) (quoting Ex. 1021, 126). In short, Mr. Haeberli presents three significant reasons why there would have been no motivation or expectation of success in combining the teachings of Wilcox with those of Raskin. Dr. Terveen’s opinion to the contrary, on the other hand, is not supported by evidence. Dr. Terveen testifies that “[a] POSITA would have been motivated to perform Lotus Notes’ multi-string search incrementally for the reasons stated by Raskin: speed, effectiveness, and ease of use.” Ex. 1003 ¶ 78 (citing Ex. 1021 ¶¶ 125–127). The evidence, however, not only fails to support Dr. Terveen’s testimony, but also demonstrates that one attempting to make the proposed combination would not have reasonably expected the proposed combination to result in greater speed or effectiveness.” slip op. at 27
Patent outcomesUS 10,552,490 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,552,490 - Microsoft Corp. v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00255 · APJ William V Saindon · IPR · Final written decision
Claims 1–27 were not shown unpatentable under either §103 ground because Petitioner did not establish a persuasive reason to combine the cited teachings with adequate factual support.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation of the level of ordinary skill, or offer its own formulation in its Response. Patent Owner’s declarant, however, states: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that [Petitioner] has provided its own definition . . . . 31. I believe [Petitioner’s] definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Patent Owner’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent. Dec. on Inst. 8. Following a review of the full record, we agree that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Patent Owner’s for the purposes of this proceeding. We continue to view Patent Owner’s proposed definition as consistent with the ’139 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Petitioner does not assert any explicit claim constructions. Pet. 12. In our Decision on Institution, the Board construed “string separator character” as “a single-character string separator.” Dec. on Inst. 10, 28–29. Patent Owner explicitly agreed with this construction in its Response (Resp. 8–9), and Petitioner offered no further comment in its Reply. Although no claim construction issue is squarely before us now, we maintain our prior construction of “string separator character,” and do not construe any further limitations. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“We agree with Patent Owner that a problem with Petitioner’s combination is that it proposes to take the idea of incremental searching from Raskin and divorce it from Raskin’s teaching of incremental searching. See PO Resp. 20 (arguing, “a [person of ordinary skill in the art] must consider all the teachings of a reference, and not pick out general ‘concepts’ disclosed in the art without considering the context in which they are used”); see also id. at 17–28 (setting out the whole argument); Ex. 2020 ¶¶ 39–62 (Patent Owner’s declarant explaining why Petitioner’s approach is “technically problematic”). Raskin’s incremental search is tied to finding and moving to character strings within a document. Ex. 1021, 125. For example, if a user were to type a string that was found in the text, “the instance [of that string] is selected and the cursor placed immediately after the end of the selection.” Id. The cursor can move about the text as characters of the search string are added or deleted. Id. at 125–126. Thus, Raskin discloses in-text search, even when searching across documents. Id. at 132 (“After the local document has been completely searched the search then proceeds through the following documents until the end of the folder is reached, when the search continues from the beginning of the first document in the folder until the current, already searched document is reached. After cycling through the folder, the next larger domain is treated similarly, and so forth.”). Raskin even distinguishes its text-finding search from Lotus Notes’ document-finding search, stating that “[i]t is usually easy to tell in what domain you are searching, because you see the results in context; what you see is not just a list of file names, as with many present search systems.” Id. (emphasis added); see also PO Sur-reply 16 (citing the same page and arguing that “Raskin recommends doing the opposite of what is claimed”). This context gives credence to Patent Owner’s argument that “the search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” PO Resp. 26–27. Indeed, Petitioner has given little-to-no explanation of how one takes the “idea of incremental search” and applies it to Lotus Notes. Ex. 2021, 116:20–117:17 (Petitioner’s declarant testifying that “Raskin is not explicitly talking about searching across a set of documents [at once], but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin does not teach a mode of incremental searching that applies to the query-style, document-finding searching in Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Patent Owner’s declarant contrasting Lotus Notes and Raskin). Raskin even states that it is “difficult or impossible to implement incremental searches” using standard interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Patent Owner’s declarant stating that this passage “directly undermines [Petitioner’s declarant’s] suggestion that a [person of ordinary skill in the art] would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Entourage and what True is doing and how it is doing it, Petitioner asserts that it would have been obvious to use True’s two search strings “to provide more targeted searching, as was common sense and well known in the art.” Pet. 60 (citing Pet. 8–9; Ex. 1057, 27); see also id. at 56, 66 (similar). But we are not persuaded by a preponderance of the evidence that True provides more targeted searching or better search results when finding documents. True itself appears silent on the issue. Petitioner cites Exhibit 1057, but all that stands for is the general premise that doing a Boolean AND search in a Web search engine reduces the number of search results. Ex. 1057, 27. Petitioner does not allege that True uses a Boolean AND search of the kind discussed in Exhibit 1057. Thus, the statement in Exhibit 1057 regarding reducing the number of search results is tied to a manner of performing Boolean searches, something Petitioner does not use to modify Entourage. In other words, Exhibit 1057 is of little relevance to the Entourage-True combination, and does not serve as a factual underpinning in support of Petitioner’s reasoning. Petitioner also cites to several other references that discuss Boolean-style searches, but these generic background disclosures do not explain why a person of ordinary skill in the art would have considered it obvious to use one or more features of the probabilistic-based interest level search from True in a document-finding application like Entourage. See Pet. 8–9 (string citing over a dozen references with no pinpoint citations). Accordingly, there appears to be little reason, absent hindsight, to incorporate some aspect of a text-as-proxy-for-sounds system like True into Entourage’s filter or Find feature to provide more targeted searching. Accord Ex. 2020 ¶ 120 (“Patent Owner’s declarant stating that “a [person of ordinary skill in the art] working on the problem of searching large document collections would not look to [True,] a system designed for navigating imprecise transcriptions of single audio files, as the technical approaches and constraints are entirely different”). Patent Owner argues, and we agree, that another problem with Petitioner’s combination is that True does not appear to actually provide more targeted or better searching. PO Resp. 59–60 (“True’s search capabilities are inherently imprecise”) (citing Ex. 1009, 1:18–27; Ex. 2001 ¶ 137); see also Ex. 1009, 4:31–37 (explaining that True uses a speech recognition system that calculates confidence levels based on a “% likelihood that [a word] corresponds to the portion of the digitized audio [at a given time]”); Ex. 2020 ¶ 114 (Patent Owner’s declarant stating that “the purpose of True is not to definitively locate where a search string actually appears”). Petitioner does not explain what about True would make some aspect of Entourage’s filter or Find features more targeted. Even if it was known to use Boolean AND searches, for example, Petitioner is not citing True to modify Entourage to have a Boolean search. True uses an “interest level” search instead, which is more inclusive than a Boolean AND search (it adds together hits for “queen” OR “mother,” and may return hits containing neither). Ex. 1009, 5:29–50, Fig. 2 (showing results list 22 having several results which do not indicate any of the searched-for words); see Ex. 2020 ¶ 116 (Patent Owner’s declarant analyzing True’s interest level search would also include “text [that] does not show the query word”). Petitioner does not appear to be proposing to incorporate an interest level search or a Boolean-style search into the filter or Find features, and we are not persuaded that True in fact provides more targeted searching. Even if the quality of the transcripts in True happened to be perfect (see Pet. Reply 10, arguing that “True describes searching a text file that has 100% accuracy”), the fact remains that True attempts to find text in particular time windows using an interest level search based on the probability that a word or words were spoken in a given time window, which is completely different from what Entourage is doing with its search (see Ex. 2020 ¶¶ 114–116, 121). In its Reply, Petitioner states that True teaches “an incremental search for multiple search strings entered in a search field.” Pet. Reply. 10. This is a broad generalization of what True does, made with the benefit of hindsight, but as we have just explained, True’s interest level search is different from the kinds of searches done in Entourage or even the Boolean-style web searches performed in the background references. See, e.g., Ex. 1057, 27. This means it is not a matter of taking one known teaching and simply applying it to another system. True is doing something different, and it’s not clear how True’s search would actually provide “precise, targeted search results” (Pet. Reply 3) given that True appears to suggest a less-targeted search than claimed (see, e.g., Ex. 1001, 29:62–63, claiming “identifying one or more documents included in both the first one or more documents and the second one or more documents”). See also Ex. 2001 ¶¶ 135 (Patent Owner’s declarant stating that “Entourage and True are directed to completely different purposes”), 136–138 (further analysis); Ex. 2020 ¶ 114 (stating that “the purpose of True is not to definitively locate where a search string actually appears”), ¶ 116 (stating that True returns text that does not even have the search word). True does not teach, suggest, or support Petitioner’s general premise that there is a benefit for an incremental search for multiple search strings entered in a search field or that such searches would provide precise, targeted search results. The problem with Petitioner’s analysis becomes more apparent when the Petition turns to the “string separator character” of claim 1. Notably, it is the claimed string separator character that converts a field with a single search string into a field with two search strings. See, e.g., Ex. 1098, 37:12– 41–4 (deposition of Patent Owner’s declarant) (discussing that a string separator character is what instructs the computer to break up one string of characters into separate strings of characters). Thus, one cannot discuss the string separator character apart from the limitations requiring first and second search strings in a single search field. Nevertheless, Petitioner treats the “string separator character” in isolation. See Pet. 61–62. Petitioner’s reason for modifying one or both of Entourage’s filter and/or Find feature(s) to have a string separator character is because “it was common to [use string separator characters].” Id. at 61. However, even if something was known, it does not mean it is obvious to incorporate it into one or both of these features in Entourage. KSR, 550 U.S. at 418 (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). Adding a string separator character to divide a single string into two separately searched strings changes how the software would function. See Ex. 1098, 39:22–40:8 (Patent Owner’s declarant testifying that software has to look for a string separator character in order to know multiple search strings were entered in the field). The space character in “Orson Welles,” used in the Advanced Find example in Barber, for example, is not a string separator character because one looking to exclude hits with “Orson Welles” is searching for the string “Orson Welles”—the space is another character in the name string whose inclusion serves a specific semantic purpose (delineating between a first and last name). See Ex. 2001 ¶ 151 (“there is no evidence that when a user types ‘Orson Welles’ into this Find command text box that a search is performed on ‘Orson’ and ‘Welles’ separately as opposed to searching on the full text string ‘Orson Welles.’”); Ex. 1006, 387 (discussing how exclude the specific person “Orson Welles” from the search, not to find someone having the first name “Orson” or the last name “Welles”); see also Ex. 1003 ¶ 144 (Petitioner’s declarant implicitly acknowledging that the space in “Orson Welles” is not a string separator character). Thus, the space character in “Orson Welles” does not signal to the computer to break the string up into two parts at the space and perform” slip op. at 42
Patent outcomesUS 9,633,139 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,139 - Digital Global Systems, Inc. v. Deepsig, Inc.Some claims unpatentablePTAB · Mar 6, 2026 · IPR2024-01358 · APJ William V Saindon · IPR · Final written decision
Claims 1–3, 7–11, 15–19, 23, and 24 are unpatentable as obvious; claims 4–6, 12–14, and 20–22 were not shown unpatentable because the prior art did not teach the claimed received-signal feedback and transmitter-model update.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that: Persons of ordinary skill in the art (“POSITA”) would have a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with of radio communication systems and machine learning. Additional work or research experience can substitute for less or different education, and vice-versa. Pet. 3–4 (citing Ex. 1003 ¶¶ 33–34). Patent Owner does not appear to challenge this level of skill. We use Petitioner’s definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’704 patent.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“parameters “associated with the base station.” PO Resp. 31–32. In particular, Patent Owner argues that a transmitter “implemented in a base station” is not “associated with the base station.” Id. at 31. Petitioner argues that Patent Owner offers no reason to believe that a transmitter “implemented in a base station” is not “associated with the base station.” Pet. Reply 4–5; see also id. at 3–6 (entire argument). A plain reading of a “model associated with a base station” would encompass a model that operates in a base station. We do not see anything in the ’704 specification that would indicate “associated with” has any special meaning, or has a meaning contrary to our understanding of the plain meaning. We do not see the word “associated” outside the claims, whereas we see the word “implement” throughout the specification, generally in reference to an actual use of a model (consistent with our plain reading). See, e.g., Ex. 1001, 5:35–39, 6:3–17, 10:55–11:3 (discussing “implementations” where the model or some other feature of the system is used in a particular way). Accordingly, we construe a model “implemented in a base station” to be “associated with the base station.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“scenarios” (see PO Resp. 16–21), Patent Owner argues that “Jüschke does not disclose any association of the weight or bias parameters, . . . to any deployment scenario, and . . . base station” (id. at 19). For the reasons explained in our claim construction section above, we construe “deployment scenarios” to include “inline mode” models located within a base station, according to the list of deployment scenarios set out in the ’704 patent. See Ex. 1001, 2:38–65. The in-line deployment scenario depicted in Figure 6A of the ’704 patent bears a striking resemblance to the arrangement depicted in Figure 1 of Jüschke. In both figures, the analog radio signal is fed directly into the model and then the model directly outputs the signal to the amplifier. Compare Ex. 1001, Fig. 6A, with Ex. 1005, Fig. 1. As construed, the “deployment scenarios” represent the physical configurations of the device in which the model is found, such as “in-line.” Petitioner shows by a preponderance of the evidence that Jüschke’s similar in-line configuration is a “deployment scenario” as claimed because it teaches an inline model for a cellular system transmitter (i.e., base station). Pet. 26–29 (citing, e.g., Ex. 1005, Fig. 1, ¶¶ 6, 59; Ex. 1003 ¶¶ 146–147); see also Ex. 1001, 2:37–41 (stating that “[t]he particular deployment scenario[] may be . . . sending a radio transmission from a cellular base station that includes the . . . model . . . in an inline mode”).” slip op. at 26
- BurdenNot shown unpatentable
“Based on our claim construction analysis of claim 4, above, we agree with Patent Owner that claim 4 requires an actually transmitted signal and an update of the transmitter’s model. This claim construction eliminates Petitioner’s position regarding Holt teaching a modeled signal. See, e.g., Pet. Reply 17–23. We then turn to Petitioner’s argument that Holt teaches updating a model using an actually transmitted signal. See Pet. 59–60. There, Petitioner relies on a disclosure in Holt of an “actual communication channel 302 used to train the channel model 208.” Ex. 1006, 18:1–2. This is depicted in Figure 6 of Holt, in connection with a “fourth loss function” which is used to “train the decoder model.” Id. at 18:42–48; see generally id. at 17:58–18:51 (describing Figure 6). Whether training the channel model or the decoder model, Holt here does not disclose using the actual communication channel to train the encoder, i.e., transmitter. In sum, we find that Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “obtaining a received radio signal,” and even if it did, Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “updating the value of the model parameters” in the manner required by claim 4. Claims 12 and 20 are nearly identical to claim 4, and Petitioner’s ground fails for similar reasons. See Pet. 76. Claims 5, 6, 13, 14, 21 and 22 depend from claims 4, 12, and 20, and Petitioner’s ground fails for similar reasons as those claims. See id. at 77–80.” slip op. at 31
Patent outcomesUS 11,018,704 mixedClaim construction§ 103 obviousnessPatents in suitUS 11,018,704 - Cisco Systems, Inc. v. Lionra Technologies LimitedAll claims unpatentablePTAB · Mar 4, 2026 · IPR2024-01281 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5–10, 12–15, and 17–21 are unpatentable as obvious over Cornett, Paatela, and Nelson; claim 8 is also unpatentable with Russell.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“been motivated to combine the teachings of Cornett, Paatela, Nelson, and Russell in the way Petitioner proposes and would have had a reasonable expectation of success. See supra §§ III.E.2(a)–(b). Hence, Petitioner has shown by a preponderance of the evidence that claim 8 is unpatentable under § 103(a) because the claim would have been obvious over Cornett, Paatela, Nelson, and Russell.” slip op. at 122
- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 13
Patent outcomesUS 7,738,471 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,738,471 - Kia Corp. / Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–5 and 7–21 are unpatentable over Kleve-based grounds; claim 6 was not shown unpatentable because the record did not support obviousness of key sharing.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Petitioner asserts a person of ordinary skill in the art would have “had at least a four-year undergraduate degree in electrical engineering, automotive engineering, or a closely related field and at least two years of experience in the field of access control systems, vehicle electronics, and/or cryptography.” Pet. 8–9 (citing Ex. 1004 ¶ 85). Dr. Almeroth supports Petitioner’s position and further testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1004 ¶ 85. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and appears to apply Petitioner’s proposed level of skill. See PO Resp. Patent Owner’s declarant, Dr. Malek, explicitly adopts Dr. Almeroth’s level of skill in the art but states that his opinions would be applicable under any reasonable definition for an ordinarily skilled artisan at the critical time. See Ex. 2021 ¶ 38. For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’659 patent and the prior art of record.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“We do not agree with Patent Owner’s argument that Dr. Almeroth’s declaration testimony contradicts Kleve. See PO Resp. 27–29. Rather, as discussed previously, we find that Kleve’s vehicle owner can set a restriction, such as the rental start period, prior to step 214 in Kleve’s Figure 2 and that such restrictions can be associated with the e-key. We also do not agree with Patent Owner’s argument that (1) Dr. Almeroth’s declaration testimony contradicts his deposition testimony or that (2) Dr. Almeroth “admitted his testimony was wrong.” See PO Sur-Reply 7 (citing PO Resp. 47–48 (citing Ex. 2022, 27:5–10, 27:21–28:1; Ex. 2021 ¶ 96)). In a particular embodiment to which Dr. Almeroth was citing, he noted that the e-key is always generated after the rental agreement. See Ex. 2022, 26:14– 20. Then the following exchange occurs: Q. So you use typically and always. So always does not refer to all of the embodiments of Kleve, is that fair? A. I think a person of skill in the art could read Kleve and understand that there are probably multiple ways in which the flow of actions among the parties could occur. And I think thinking about a real world scenario, in most cases you have an agreement before you would generate an eKey, but maybe, maybe not. I don’t -- I don’t know that the real world is necessarily cut and dry. So reading -- a person reading Kleve would understand it’s describing embodiments where it’s scenario, but I don’t know that it would necessarily be a hard and fast rule in every embodiment or in the understanding a person of skill in the art would have. Id. at 28:3–20. There is nothing in the deposition testimony by Dr. Almeroth that appears inconsistent with his declaration testimony nor does there appear to be the kind of admission touted by Patent Owner. Instead, it is Dr. Malek who takes an overly narrow view of Kleve that appears inconsistent with Kleve’s disclosure when read as a whole. See, e.g., Ex. 2021 ¶¶ 82–88. Therefore, we do not credit or agree with Dr. Malek’s testimony that Kleve fails to teach the concept of a virtual key created with the agreed-upon rental period as a restriction. See id. ¶ 57. Thus, based on the entire trial record, we find that Petitioner has” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“After review of the arguments and evidence, we agree with Petitioner’s position. Specifically, we agree that (1) both Kleve and Hatton are directed to use of electronic key systems for vehicles (see Ex. 1005 ¶¶ 7– 9, 39, 63; Ex. 1008, 1:48–52, 1:61–2:2, 5:25–34) and (2) encrypted communications would have been understood to be effective in preventing unauthorized access to the vehicle, something that is taught explicitly by Hatton (see Ex. 1008, 9:50–63). Given these disclosures by Kleve and Hatton, we find that a person of ordinary skill in the art would have had a at the challenged claims. Accordingly, we find that a person of ordinary skill in the art at the critical time would have had a reason to combine the teachings of Kleve with that of Hatton.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner’s argument appears to be purely hindsight analysis based on the teachings of the ’659 patent and the limitations of challenged claim 6 because there is insufficient evidence or teachings in the cited prior art to suggest the sharing of virtual keys. Petitioner’s argument that having “rental microbusiness” implemented as a “smart phone application” that enables sharing virtual keys is insufficient to show obviousness, because, as noted by Patent Owner, certain embodiments in Kleve appear to discourage or even hinder the sharing of virtual keys. These embodiments require the use of credentials associated with the virtual key, where the credentials can be “facial recognition, voice print recognition, matrix barcode (ex. two-dimensional code), code word or phrase for speech recognition, temporary mobile web login IDs and password, or other types service.” See Ex. 1005 ¶ 37. Dr. Almeroth testifies that multiple people could be authorized on the same vehicle if they collectively rent a vehicle and that a person of ordinary skill in the art would “have been motivated to enable each user to share the virtual key with other authorized users associated with the same rental request.” Ex. 1004 ¶ 55. But given Kleve’s disclosure that the system handles key generation and distribution (Ex. 1005 ¶ 39), the evidence does not show that a person of ordinary skill in the art would have wanted to give this control to each authorized user who has received an e-key. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Kleve’s teachings undermine Petitioner’s position, and do not support a finding of obviousness. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Kleve alone or in combination with Hatton would have rendered dependent claim 6 obvious to a person of ordinary skill in the art at the critical time.” slip op. at 39
Patent outcomesUS 11,738,659 mixed§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,738,659 - PTAB · Jan 14, 2026 · IPR2025-01191 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “the information 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). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. PATENT OWNER’S 35 U.S.C. § 325(D) ARGUMENTS Patent Owner presents arguments directed to discretionary considerations under 35 U.S.C. § 325(d) and requests the Petition be denied based on these arguments. Prelim. Resp. 2–16. However, Patent Owner’s § 325(d) arguments are untimely under the “Interim Director Discretionary Process,”6 and, as such, will not be considered by the Board. See Section I.C. (“The . . . patent owner should not present discretionary considerations in the . . . Patent Owner Preliminary Response (POPR)”); Section I.E. (“[A] Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations.”). 5 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step1 6 https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden of establishing that Wang is a printed publication. Medtronic, 891 F.3d at 1380. The determination of whether a document is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is unpatentable as anticipated under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must also “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,822,165 - PTAB · Dec 19, 2025 · IPR2025-01110 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–16, finding a reasonable likelihood they are obvious over Kim and over Chu and Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable 1 Deputy Director Stewart was recused in this matter. claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent, as of the Critical Date,” and that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, except as to the date that pertains to such skill level. Prelim. Resp. 4–5. Namely, Patent Owner asserts that “Petitioner is incorrect” that “the ’171 Patent is entitled to an effective date of no earlier than January 22, 2021.” Id. at 5. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’171 Patent Specification and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of required experience.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“claim construction standard as that applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312. “Petitioner submits that no formal claim constructions are necessary.” Pet. 1–2. Similarly, “Patent Owner does not contend that any formal claim construction is necessary” at this stage of the proceeding. Prelim. Resp. 5. For the purpose of institution, we need not explicitly construe any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. 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 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870–71 (Fed. Cir. 2010). For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must [] convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.”), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). On the record before us, we do not agree that the ’171 Patent is entitled to a filing date earlier than Jan. 11, 2021. In particular, we do not agree that PCT ’199 describes the invention in enough detail such that a person of ordinary skill in the art could conclude that the inventor was in possession of the invention as of the March 4, 2016 filing date. The disclosures of PCT ’199 cited by Patent Owner to show written description support show: (1) transmission packets for multi-user uplink data, which includes padding such that multi-user upstream data transfers from each resource terminate at the same time (see Ex. 1012 ¶¶ 17–21); (2) performing padding on a trigger frame that triggers multi-user simultaneous transmission, where the trigger frame includes AID information of the performing preset padding before the FCS field of the trigger frame according to one embodiment (see Ex. 1012 ¶ 136, Fig. 20); and (4) inserting redundant AID information prior to the FCS field of the trigger frame, according to another embodiment (see Ex. 1012 ¶ 136, Fig. 20). PCT ’199 does not describe the invention in enough detail to enable a person of ordinary skill in the art to conclude that the inventor possessed a frame for allocating resource for uplink (UL) multi-user (MU) transmission to one or more terminals that includes the AID field set to a value related to a first padding field, when the padding field is included in the frame. In particular, we discern no disclosure that conveys that the inventor possessed the following: (1) an AID field for the MU UL resource allocation frame is set to a value, (2) that the AID field is set to a value related to the padding field, and (3) that the AID field is set to a value related to the padding field, and conditioned on the inclusion of the AID field in the frame. Moreover, to the extent that Patent Owner’s assertions are premised on the PCT ’199’s disclosure of a preset padding being performed before the FCS field of the trigger frame and the disclosure of inserting redundant AID information prior to the FCS field of the trigger frame, we note that these disclosures are directed to two embodiments. See Ex. 1012 ¶ 136, Fig. 20. PCT ’199 does not provide any suggestion that the two embodiments are used together, or that the redundant AID information of one embodiment can serve as a preset padding of the other embodiment.” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 11,716,171 - PTAB · Dec 19, 2025 · IPR2025-01111 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood they are unpatentable over Kim and over Chu in combination with Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable 1 Deputy Director Stewart was recused in this matter. claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent, as of the Critical Date,” and that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, except as to the date that pertains to such skill level. Prelim. Resp. 4. Namely, Patent Owner asserts that “Petitioner is incorrect” that “the ’186 Patent is entitled to an effective date of no earlier than April 8, 2019.” Id. at 4–5. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’186 Patent Specification and the asserted prior art, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of required experience.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must [] convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.”), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). On the record before us, we do not agree that the ’186 Patent is entitled to a filing date earlier than April 8, 2019. In particular, we do not agree that PCT ’199 describes the invention in enough detail such that a person of ordinary skill in the art could conclude that the inventor was in possession of the invention as of the March 4, 2016 filing date. The disclosures of PCT ’199 cited by Patent Owner to show written description support, show: (1) transmission packets for multi-user uplink data, which includes padding such that multi-user upstream data transfers from each resource terminate at the same time (see Ex. 1012 ¶¶ 17–21); (2) performing padding on a trigger frame that triggers multi-user simultaneous transmission, where the trigger frame includes AID information of the stations assigned to each channel (see Ex. 1012 ¶¶ 134–135, Fig. 20); (3) performing preset padding before the FCS field of the trigger frame inserting redundant AID information prior to the FCS field of the trigger frame, according to another embodiment (see Ex. 1012 ¶ 136, Fig. 20). PCT ’199 does not describe the invention in enough detail to enable a person of ordinary skill in the art to conclude that the inventor possessed a trigger frame indicating uplink transmission for one or more terminals that includes an AID field used to identify whether the trigger frame includes a padding field, and the trigger frame including the padding field when the AID field is set to a specific value. In particular, we discern no disclosure that conveys that the inventor possessed the following: (1) a trigger frame indicating uplink transmission to one or more terminals and including an AID field used to identify whether the trigger frame includes a padding field; (2) the AID field for the trigger frame is set to a specific value, and (3) that trigger frame includes the padding field when the AID field is set to a specific value. Moreover, to the extent that Patent Owner’s assertions are premised on the PCT ’199’s disclosure of a preset padding being performed before the FCS field of the trigger frame and the disclosure of inserting redundant AID information prior to the FCS field of the trigger frame, we note that these disclosures are directed to two embodiments. See Ex. 1012 ¶ 136, Fig. 20. PCT ’199 does not provide any suggestion that the two embodiments are used together, or that the redundant AID information of one embodiment can serve as a preset padding of the other embodiment. On the record before us, we also do not agree that KR ’754 describes the invention in enough detail such that a person of ordinary skill in the art could conclude that the inventor was in possession of the invention as of the March 17, 2015 filing date of KR ’754. The disclosures of KR ’754 cited by Patent Owner to show written description support show: (1) multiplexed terminals over respective channels, (see Ex. 1008 ¶¶ 65–66, Fig. 10); (2) differing the number of AID values in the batch acknowledgment (BA) information field when the number of terminals assigned to each channel differs, setting the length of each multiplexed group ACK differently, and, if necessary, aligning the lengths of the multiplexed group ACKs based on the channel with the longest assigned BA information by adding zero padding or repeatedly inserting BA information (see Ex. 1008 ¶¶ 66–70, Fig. 11); and (3) applying the use of the AID field padding and the use of BA padding in a downlink OFDMA trigger process during multi-user downlink transmission to align the length of the trigger when the AP notifies the terminals assigned to each channel by inserting zero padding or repeating AIDs (see Ex. 1008 ¶¶ 71–72, Figs. 11–12). KR ’754 does not describe the invention in enough detail to enable a person of ordinary skill in the art to conclude that the inventor possessed a trigger frame indicating uplink transmission for one or more terminals that includes an AID field used to identify whether the trigger frame includes a padding field, and the trigger frame including the padding field when the AID field is set to a specific value. In particular, we do not discern disclosure in KR ’754 that conveys that the inventor possessed the following: (1) a trigger frame indicating uplink transmission to one or more terminals and including an AID field used to identify whether the trigger frame includes a padding field; (2) the AID field for the trigger frame is set to a specific value, and (3) that trigger frame includes the padding field when the AID field is set to a specific value. We find misplaced Patent Owner’s argument that “KR ’754’s discussion about Figure 10 and Figure 11 would have been understood [by a POSITA] as disclosing a padding method used to improve predictability and consistency trigger frame” (Prelim. Resp. 12) because: (1) it addresses uplink transmissions and not a trigger frame indicating uplink transmission to one or more terminals; (2) it does not address that the padding field is included in the trigger frame when the AID field is set to a specific value; and (3) it is unsupported attorney argument regarding the understanding of a person of ordinary skill in the art. Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009). We also find misplaced Patent Owner’s argument that “the padding discussed by KR ’754 regarding its Figure 12 embodiment is not limited to downlink transmission and would have been understood by a POSITA as also being used to schedule uplink ones” (Prelim Resp. 14) because: (1) KR ’754 does not provide any suggestion that the same technique can be used for uplink transmission trigger frames; (2) Patent Owner’s argument does not address that the padding field is included in the trigger frame when the AID field is set to a specific value; and (3) Patent Owner’s argument is unsupported attorney argument regarding the understanding of a person of ordinary skill in the art. See Gemtron, 572 F.3d at 1380. For the foregoing reasons and based on this record, for the purpose of institution, we find that the ’186 Patent is not entitled to an effective filing date earlier than April 8, 2019 and find that Kim is prior art. We note that the limitations at the heart of the written description dispute were added in an amendment filed August 9, 2020. See Ex. 1002, 214–21. In further briefing, the parties should address the respective burdens of production and persuasion for establishing that the ’186 Patent is entitled to an earlier” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments because they are premised on Choi’s teachings as limited to AIDs transmitted via a control frame broadcast as a TIM element. A prior art “reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). Chu, Choi, and the testimony of Dr. Ding (Ex. 1003), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to combine Chu’s teachings with Choi’s use of specific AID or ΔAID values as indicators of the end of meaningful data and the beginning of padding that would allow client stations to reliably determine where the useful content of the trigger frame ends and where optional padding begins, with the benefits of improved parsing efficiency, enhanced synchronization, and reduced likelihood of misinterpreting padding as data as padding. See Pet. 46–48 (citing Ex. 1003 ¶¶ 150–156; Ex. 1015 ¶ 93; Ex. 1016 ¶¶ 24, 184), 61–62 (citing Ex. 1003 ¶¶ 157–163, Pet. 45–48); KSR, 550 U.S. at 418.” slip op. at 29
§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 10,911,186
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.