- PTAB · Oct 16, 2025 · IPR2025-00702 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 4, 5, 16, 17, and 19 on all asserted grounds after finding a reasonable likelihood that claim 4 was obvious over Nakamura and Benini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2023). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’270 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’270 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field, with at least two years of relevant experience working with VR [virtual reality] and AR [augmented reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 27 (citing Welch Decl. ¶¶ 88–90, 91). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(citing Phillips, 415 F.3d at 1312–17). “[W]hile extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks omitted). We construe expressly only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner contends that “[t]his Petition establishes the prior art meets each of the claim limitation[s] under any reasonable construction,” and, “[t]hus, no express construction is required.” Pet. 27–28. Patent Owner’s Preliminary Response does not contain a separate claim construction section. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. Setting an origin location Limitation 4.a.1 recites, “a first manual input for setting a[n] origin location setting for a location reference for gameplay.” Ex. 1001, 24:44–46. Patent Owner argues that Petitioner has not shown that this limitation disclosed or rendered obvious by the relied-on references. See Prelim. Resp. 29. Petitioner contends that Nakamura teaches the user’s manual selection of a starting point of a game. Pet. 38–40 (citing, inter alia, Welch Decl. ¶¶ 147–148; Ex. 1007 ¶¶ 9, 35–36, Fig. 5); see also id. at 62 (for this Ground 2, referencing the contentions made for Ground 1). Petitioner further contends that “[a] POSITA would have also recognized that the initial position setting provides a location reference for gameplay.” Id. at 63. For this Ground 2, Patent Owner incorporates by reference its arguments regarding Ground 1 based on Cheok, Nakamura, and Foxlin077. See Prelim. Resp. 29. Patent Owner argues that “Nakamura’s position icon 113 [displayed at a virtual location appropriate for the initial position] represents a virtual character’s virtual location in the virtual world, rather than a user’s physical location, and has no relationship to the physical location.” Prelim. Resp. 24 (citing Ex. 1038 ¶¶ 36, 38). According to Patent Owner, “establishing a physical origin location as a location reference is critical to key features of the patented system.” Id. at 25 (citing Section III of the Preliminary Response). Patent Owner’s argument is not commensurate in scope with the language of claim 4, which recites an input for setting “a[n] origin location,” not “a physical origin location.” In support of its arguments, Patent Owner relies on the Specification, stating, for example, that “[t]he ’270 patent’s system ‘prompt[s] a user to” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,967,270 - PTAB · Oct 15, 2025 · IPR2025-00703 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1, 4, 11, 16, 30, and 102 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Cheok and Foxlin077.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. As an initial matter, the claim does not recite “a bounded physical play space.” Rather, the claim recites “a physical playfield.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or similar field, with at least two years of relevant experience working with VR [Virtual Reality] and AR [Augmented Reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Welch ¶95; see also ¶¶94. Pet. 17. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“references’ teachings. Prelim. Resp. 36–38. Patent Owner specifically argues that “[t]here is no motivation to modify Cheok’s method for allegedly determining the direction of gameplay to include a prompt requesting a manually provided direction; it already allegedly determines direction by the user’s simple movement, which the user will already do while playing the game, a much more efficient process.” Id. at 36 (citing Pet., 29–36). According to Patent Owner, “[a]dding a prompt requesting manual user input for a direction of gameplay has drawbacks to user experience; it slows down the beginning of gameplay and complicates the overall system, removing the natural feel of playing without having to set up the game, when Cheok already works for its intended purpose.” Id. at 36–37. We do not find these arguments persuasive at this stage. Even if Patent Owner is correct that the proposed combination would be less efficient or slow down the beginning of play, that there may be drawbacks from the proffered combination of teachings does not necessarily show a lack of motivation to combine teachings. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). And, even if the proposed combination would not have been the best choice, that does not necessarily mean that it was non-obvious. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Dr. Welch testifies, for example, that “[a] POSITA would have . . . recognized it would be beneficial to improve the Cheok system by implementing a similar inertial sensor initialization/reinitialization process [as in Foxlin077] to address any potential accuracy or user experience issues associated with drift.” Welch Decl. ¶ 156. Dr. Welch also testifies that, “in a virtual environment application like the Cheok system, in which a user must interact with the real environment, a POSITA would have understood that Foxlin077’s manual reinitialization process would be beneficial to address accumulated drift when an automatic drift compensator component is not sufficiently removing drift.” Id. ¶ 157. At this stage, that testimony is unrebutted with evidence, as opposed to mere attorney argument.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2023). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’821 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’821 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,033,821 - Intel Corporation v. Telefonaktiebolaget LM Ericsson (Publ)Some claims unpatentablePTAB · Oct 8, 2025 · IPR2024-00728 · APJ Russell E Cass · IPR · Final written decision
Claims 1–5, 7, 8, 10–15, and 17–19 are unpatentable as obvious; claims 6, 9, and 16 are not shown unpatentable because the Midya-based grounds fail on the terminal limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the full trial record, we continue to adopt Petitioner’s definition of the level of ordinary skill in the art, which is consistent with the ’430 patent and the prior art. In adopting this definition, we note that neither the title nor the “Field of the Invention” portions of the ’430 patent limit the invention to integrated circuits, and Patent Owner does not dispute that claim 1 encompasses inductors that are not provided on an integrated circuit. Ex. 1001, code (54), 1:16–22. Additionally, Dr. Prucnal’s definitions have shifted, and his latest definition purports to be based on Dr. Tentzeris’s characterization of the level of ordinary skill, but changes “experience designing integrated circuits or inductors for semiconductors” to “experience designing integrated circuits and inductors for semiconductors” without sufficient explanation of the reasons for the change. Supp. Prucnal Decl. ¶ 8; Reply Tentzeris Decl. ¶ 56. However, our Decision in this case would not change under Patent Owner’s revised articulation. See Reply Tentzeris Decl. ¶ 57 (stating that his opinion would not change under Patent Owner’s revised definition of the level of ordinary skill).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“After considering the full trial record, we agree with Petitioner that the phrase “on a semiconductor die” in the preamble of claim 11 is not limiting. First, we determine that the phrase “on a semiconductor die” in claim 11 does not provide antecedent basis for terms in the body of the claim. The body of claim 11 does not refer to “the semiconductor die” or even mention the “semiconductor die” at all, and neither do any of the claims that depend from claim 11. We disagree with Patent Owner’s argument that the phrase “on a semiconductor die” in the preamble of claim 11 provides antecedent basis for the term “the first inductor” in the body of the claim, because the “first inductor” language in the preamble provides antecedent basis for “the first inductor” language in the claim’s body. The “on a semiconductor die” language in the preamble is presented separately and can be easily parsed from the preamble’s language reciting a “first inductor” without impacting the understandability or grammatical completeness of claim 11. Therefore, the “on a semiconductor die” language in claim 11’s preamble is not necessary to provide antecedent basis for the phrase “the first inductor” in the body of claim 11. This use of language in claim 11 is distinguishable from the Federal Circuit’s opinion in Deere v. Bush Hog, cited by Patent Owner, where the preamble term “rotary cutter deck” provided antecedent basis for the term “said deck” recited in the claim body, because in Deere, the words “rotary cutter” appeared directly before, directly modified, and were not easily parsed from the term “deck.” See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357–58 (Fed. Cir. 2012); PO Resp. 7–8.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We agree with Petitioner that claims 1 and 11 do not require that the first and second inductor be laterally spaced, but instead merely require that the second inductor be positioned at a “predetermined distance” from the first inductor. Nothing in the claim language restricts this “predetermined distance” from being in the X, Y, or Z direction, or requires that the inductors be laterally spaced in the same plane. Moreover, the fact that the ’430 patent Specification describes embodiments where the inductors are laterally spaced in the same plane does not limit the claims to those embodiments. As explained previously, our reviewing court “has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Liebel-Flarsheim, 358 F.3d at 906. “Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” Id. We see no such “words or expressions of manifest exclusion or restriction” here. Accordingly, we give the term “predetermined distance” its ordinary meaning, which includes a distance in any direction. The parties do not dispute that Taniguchi’s inductors are spaced apart with an insulation layer in between. Therefore, under the ordinary meaning of the claim language, Taniguchi’s second inductor is “positioned at a predetermined distance from the first inductor.”” slip op. at 26
- Prior constructionPrior construction adoptedDecided for patent owner
“We agree with and adopt the ITC’s construction of “closely spaced,” which is “two terminals in proximity to each other (such that the electromagnetic field at a certain distance from the first inductor (where the second inductor is positioned) is reduced.” Ex. 1020, 12. We find that this construction is supported by the intrinsic record, including the Specification of the ’430 patent, which shows terminals being “closely spaced” compared to the dimensions of the inductor itself, and explains that the purpose of the close spacing is to make the field contributions from the two parts of the inductor identical. See Ex. 1005, Figs. 1–2, 4:28–32. Claims 1 and 11 of the ’430 patent lack specific dimensions for either the inductor or the spacing between the terminals, and indicate that the purpose of the close spacing is to “minimiz[e] magnetic field contributions from the terminals.” Ex. 1001, 10:22–25, 11:7–10. Dr. Prucnal’s ITC declaration, although not intrinsic evidence, further supports our conclusion. Although Patent Owner does not propose a construction for “closely spaced terminals,” it appears to argue that this term must be interpreted based on the dimensions of the semiconductor chip described in the ’430 patent. PO Resp. 43. We do not see any basis in the intrinsic or extrinsic evidence to impart such a narrow reading to the claim language, particularly because the ’430 patent Specification does not define the “closely spaced terminals” in relation to a semiconductor chip, and claim 1 is not limited to inductors on a semiconductor chip.” slip op. at 40
Patent outcomesUS 7,151,430 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,151,430 - Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentablePTAB · Aug 13, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not determined unpatentable under the asserted prior-art grounds.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32
- Skill levelOther
“C. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the ’336 patent’s effective filing date would have had “a bachelor’s degree in mechanical engineering, electrical engineering, optics, or physics with at least three years of experience working in the design of LED lights or lighting fixtures; a master’s degree in one of the above disciplines with at least two years of experience; or equivalent experience.” Pet. 14 (citing Ex. 1004 ¶¶ 26–29). Dr. Eden’s testimony supports Petitioner’s assertion. See Ex. 1004 ¶¶ 27–28. Patent Owner “adopts for purposes of this proceeding only” Petitioner’s description of an ordinarily skilled artisan. Resp. 10 (citing Pet. 14). We adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’336 patent as” slip op. at 40
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016); see Ancora Techs., Inc. v. Roku, Inc., 140 F.4th 1351, 1361 (Fed. Cir. 2025) (noting that the Board did not err by requiring “a nexus to the challenged claims as opposed to the patent as a whole”). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by” slip op. at 76
Patent outcomesUS 10,299,336 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentablePTAB · Aug 13, 2025 · IPR2024-00101 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not shown unpatentable under the asserted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we” slip op. at 32
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. WHETHER THE PETITION IS TIME BARRED The parties dispute whether the Petition is time barred based on a” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“vacated the panel’s decision denying institution. Paper 12, 6. Among other things, the Director determined based on a “review of the current record” that (1) Menard is not a real party in interest in this proceeding and (2) Menard is not a privy of Petitioner. Id. at 5. Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Id. at 5–6.” slip op. at 3
- BurdenMixed
“U.S. Patent No. 10,299,336 B2 (“the ’336 patent”) (Exhibit 1001). For the reasons explained below, a preponderance of the evidence shows that claims 1–7, 9–15, and 18–20 in the ’336 patent are unpatentable and does not show that claims 8, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (2024).” slip op. at 2
Patent outcomesUS 10,299,336 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00329 · APJ Steven M Amundson · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 12–15, 17, and 20–23 are unpatentable as obvious over Stone and Hoyos, with Varghese additionally applied to claims 7, 15, and 22.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4. Petitioner also asserts that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard” for an ordinarily skilled artisan. Id. at 4–5. Dr. Jones’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 19–20. In the Institution Decision, we adopted Petitioner’s description of an ordinarily skilled artisan except for the language “at least” that qualifies the experience level and allows the experience level to encompass an expert’s level of skill. Inst. Dec. 21. We explained that except for the language “at least” that qualifies the experience level, “Petitioner’s description of an ordinarily skilled artisan comports with the technology and claims of the ’010 patent as well as the asserted references.” Id. (citing Ex. 1003 ¶ 20). In the Response, Patent Owner notes that for “the purposes of this” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“3. WHETHER STONE IS ANALOGOUS ART (a) General Principles “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). According to the Federal Circuit, the Supreme Court’s KSR decision “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (emphasis by the court) (quoting KSR, 550 U.S. at 402). In an inter partes review, the petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023). The scope of analogous art includes references “from the same field of endeavor” and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). When evaluating the field of endeavor, a “factfinder must consider each reference’s disclosure in view of the ‘the reality of the circumstances,’ and ‘weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” Airbus, 941 F.3d at 1380 (citations omitted) (quoting Bigio, 381 F.3d at 1326); see id. at 1381. Hence, a field-of-endeavor analysis should consider a patent’s claims and written description. See id. at 1380–81.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF THE REFERENCES WITH A REASONABLE EXPECTATION OF SUCCESS (a) Petitioner’s Contentions (i) Motivation to Combine: The Proposed Combination To show the proposed combination, Petitioner provides the following annotated version of Stone’s Figure 2 combined with Stone’s Figure 3 together with additional steps according to Hoyos (Pet. 20): The above illustration includes Stone’s Figure 2 showing display 200 on an electronic device, Stone’s Figure 3 showing steps 300 through 318 for transferring funds to a recipient, and the following annotations in red: (1) a dashed line from the “$ Send money” button in Figure 2 to step 300 for “Select Currency for Display” in Figure 3; (2) a dashed line from name box 202 in Figure 2 to step 312 for “Enter Recipient Information” in Figure 3; (3) a dashed line from funding source box 206 in Figure 2 to step 314 for “Enter Funding Source” in Figure 3; (4) a dashed line from the “Send” button 214 in Figure 2 to step 316 for “Confirm?” in Figure 3; and (5) additional steps after a “Yes” determination in step 316 for “Confirm?” as follows: (i) “Capture biometric info”; (ii) “Perform fraud detection”; (iii) “Trans authenticated?”; and (iv) “Stop transaction.” Pet. 20; see Ex. 1003 ¶ 62; Ex. 1008 ¶¶ 11–12, 16, 23–24, 29–35, Figs. 2–3.” slip op. at 42
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“5. INDEPENDENT CLAIM 1 (a) Preamble 1.0 Claim 1 recites “[a] system.” Ex. 1001, 13:56. Petitioner contends that Stone teaches claim 1’s preamble because Stone discloses “system 400 configured to utilize the currency display over a network 402.” Pet. 22 (emphasis omitted) (quoting Ex. 1008 ¶ 40). According to Petitioner, “Stone further describes that its system includes software ‘such as program code and/or data . . . stored on one or more computer readable mediums.’” Id. at 23 (alteration by Petitioner) (quoting Ex. 1008 ¶ 54). Patent Owner makes no arguments specific to claim 1’s preamble. See, e.g., Resp. 14–34; Sur-reply 2–26. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Generally, a preamble does not limit a claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We need not decide whether claim 1’s preamble limits the claim because, for the reasons stated by Petitioner and supported by Dr. Jones’s testimony, we agree with” slip op. at 62
Patent outcomesUS 9,972,010 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,972,010 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00331 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–12, 14–18, and 20–23 are unpatentable as obvious over Stone, Hoyos, and Varghese; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4. Petitioner also asserts that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard” for an ordinarily skilled artisan. Id. Dr. Jones’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 19–20. In the Institution Decision, we adopted Petitioner’s description of an ordinarily skilled artisan except for the language “at least” that qualifies the experience level and allows the experience level to encompass an expert’s level of skill. Inst. Dec. 21. We explained that except for the language “at least” that qualifies the experience level, “Petitioner’s description of an ordinarily skilled artisan comports with the technology and claims of the ’886 patent as well as the asserted references.” Id. (citing Ex. 1003 ¶ 20). In the Response, Patent Owner notes that for “the purposes of this” slip op. at 18
- Obviousness (§103) › Analogous artOther
“4. WHETHER STONE IS ANALOGOUS ART (a) General Principles “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). According to the Federal Circuit, the Supreme Court’s KSR decision “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (emphasis by the court) (quoting KSR, 550 U.S. at 402). In an inter partes review, the petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023). The scope of analogous art includes references “from the same field of endeavor” and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). When evaluating the field of endeavor, a “factfinder must consider each reference’s disclosure in view of the ‘the reality of the circumstances,’ and ‘weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” Airbus, 941 F.3d at 1380 (citations omitted) (quoting” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“5. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF THE REFERENCES WITH A REASONABLE EXPECTATION OF SUCCESS (a) Petitioner’s Contentions (i) Motivation to Combine: The Proposed Combination To show the proposed combination, Petitioner provides the following annotated version of Stone’s Figure 2 combined with Stone’s Figure 3 together with additional steps according to Hoyos and Varghese (Pet. 22): The above illustration includes Stone’s Figure 2 showing display 200 on an electronic device, Stone’s Figure 3 showing steps 300 through 318 for transferring funds to a recipient, and the following annotations in red: (1) a dashed line from the “$ Send money” button in Figure 2 to step 300 for “Select Currency for Display” in Figure 3; (2) a dashed line from name box 202 in Figure 2 to step 312 for “Enter Recipient Information” in Figure 3; (3) a dashed line from funds box 204 in Figure 2 to step 304 for “Enter Amount” in Figure 3; (4) a dashed line from funding source box 206 in Figure 2 to step 314 for “Enter Funding Source” in Figure 3; (5) a dashed line from the “Send” button 214 in Figure 2 to step 316 for “Confirm?” in Figure 3; and (6) additional steps after a “Yes” determination in step 316 for “Confirm?” as follows: (i) “Capture biometric info” followed by “Perform fraud detection”; (ii) “Capture location” followed by “Perform fraud detection”; (iii) “Trans authenticated?”; and (iv) “Stop transaction.” Pet. 22; see Ex. 1003 ¶ 68; Ex. 1008 ¶¶ 11–12, 16, 23–24, 29–35, Figs. 2–3.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“6. INDEPENDENT CLAIM 1 (a) Preamble 1.0 Claim 1 recites “[a] system.” Ex. 1001, 14:2. Petitioner contends that Stone teaches claim 1’s preamble because Stone discloses system 400 “configured to utilize the currency display over a network 402.” Pet. 23 (emphasis omitted) (quoting Ex. 1008 ¶ 40); see id. at 70. According to Petitioner, system 400 includes “at least a user device 404,” one or more recipient devices 406, and “at least one payment provider server 408” communicating “over the network 402.” Id. (quoting Ex. 1008 ¶ 40). Patent Owner makes no arguments specific to claim 1’s preamble. See, e.g., Resp. 14–36; Sur-reply 2–22. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Generally, a preamble does not limit a claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We need not decide whether claim 1’s preamble limits the claim because, for the reasons stated by Petitioner and supported by Dr. Jones’s testimony, we agree with Petitioner that Stone teaches claim 1’s preamble. See Pet. 23–24; Ex. 1003 ¶¶ 85–88. (b)” slip op. at 76
Patent outcomesUS 11,526,886 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,526,886 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00330 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1, 4–10, and 13–19 over Stone, Hoyos, and Varghese; claims 2, 3, 11, and 12 over Stone, Varghese, and Borovsky.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“all the evidence in the record, for the foregoing reasons, we find that a preponderance of the evidence supports Petitioner’s position that an ordinarily skilled artisan would have been motivated to combine Stone and Hoyos. Ex. 1003 ¶¶ 59–69; Ex. 1056 ¶¶ 15–16.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that “a Person of Ordinary Skill in the Art (‘POSITA’) at the time of the claimed invention would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶ 21). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for POSITA.” Id. at 4–5 (citing Ex. 1003 ¶ 21). Patent Owner has applied Petitioner’s definition of the level of skill of a person of ordinary skill in the art. PO Resp. 14. We apply Petitioner’s undisputed level of skill in the art with the exception of the phrase “at least” which injects potential ambiguity into the level of skill, because Petitioner’s proposed level of skill appears consistent with the problems addressed in the ’656 patent and the prior art. C. Claim Construction We apply the same claim construction standard used by Article III” slip op. at 9
- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION14 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that the Challenged Claims of the ’656 patent are unpatentable. In summary: 35 Claim(s) Claim(s) Reference(s)/ Claim(s) U.S.C. Shown Not Shown Basis § Unpatentable Unpatentable 1, 4–10, 103(a) Stone, Hoyos, 1, 4–10, 13– 13–19 Varghese 19” slip op. at 86
Patent outcomesUS 10,713,656 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,713,656 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 1, 2025 · IPR2024-00332 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–6, 10–16, 20, and 21 are unpatentable as obvious over Kesanupalli, Challener, and Cheng.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has applied Petitioner’s definition of the level of skill of a person of ordinary skill in the art. PO Resp. 13. We apply Petitioner’s undisputed level of skill in the art with the exception of the phrase “at least” which injects potential ambiguity into the level of skill, because Petitioner’s proposed level of skill appears consistent with the problems addressed in the ’512 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the complete record before us, we determine that it is not necessary for us to expressly construe any claim term. 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. Ground 1: Alleged Obviousness of Claims 1–6, 10–16, 20, and 21 over” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For the following reasons, based on the evidence and arguments presented by Petitioner, we are persuaded that Petitioner establishes that an ordinarily skilled artisan would have been motivated to combine Kesanupalli and Challener with a reasonable expectation of success. Pet. 23–24; Ex. 1003 ¶¶ 48–51, 83. First, Patent Owner’s reliance on what Mr. Ramesh Kesanupalli, the individual, allegedly chose not to include in the disclosure of the Kesanupalli patent reference is unavailing. The question of obviousness is determined from the perspective of a hypothetical person of ordinary skill in the art not an actual person who may or may not have been a person of ordinary skill in the art. Ramesh Kesanupalli is one of five named co-inventors on Kesanupalli. Ex. 1006, code (75). 7 Patent Owner’s argument, in essence, is an improper request to limit the Kesanupalli reference to just the explicit problems addressed, solutions proposed, and goals achieved by the Kesanupalli reference. However, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). We have reviewed all of the cases cited by Patent Owner regarding the determination of obviousness. None of them is at odds with the principle stated in Heck.” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Summary of Claim 1 For all the foregoing reasons, Petitioner establishes a by a preponderance of the evidence that claim 1 would have been obvious over Kesanupalli, Challener, and Cheng.” slip op. at 62
Patent outcomesUS 10,929,512 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,929,512 - Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-00343 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Rădulescu2004 and OCP; the Board did not reach the Weber-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“35 U.S.C. § 112 ¶ 6 (2006). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). “[This] presumption may be rebutted if the properly construed claim limitation itself recites sufficiently definite structure to perform the claimed function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“Ex. 1001, 4:46–50. This passage indicates that the interconnect can be a network on a chip and the network on a chip can include wires and buses. That does not necessarily mean that the interconnect can be just wires or buses; rather, it discloses that the interconnect can include wires and buses. In context, the disclosure regarding wires and buses does not support construing the corresponding structure broadly enough to encompass just wires and buses. The networks that constitute the corresponding structure, however, could include networks with wires and buses. Therefore, we agree with Patent Owner that the corresponding structure for the interconnect means should not include a mere bus, switch, and point-to-point wire and instead find that the corresponding structure under 35 U.S.C. § 112 ¶ 6 is a network, which the ’052 patent describes as a multi-hop interconnection between modules separated by one or more network nodes. See Ex. 1001, 2:33–37. Because this structure corresponds to the construction of “interconnect means” proposed by Patent Owner and adopted by the district courts in the TI and Qualcomm litigations (see supra Section III.C.3.b), and we do not rely in our analysis below on a recourse to “equivalents thereto” as permitted by § 112 ¶ 6, we note that our ultimate conclusions on the unpatentability of the challenged claims would be the same if § 112 ¶ 6 did not apply. iii. Conclusion For the reasons stated above, we construe “interconnect means” to cover the structure described in the Specification corresponding to the specified functions of “coupling said plurality of processing modules (M, S)” in the context of claim 6 and “coupling said plurality of processing modules (M, S)” and “enabling a connection-based communication having a set of connection properties” in the context of claims 1 and 7—i.e., a “multi-hop interconnection between modules separated by one or more network nodes”—and equivalents thereof.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Patent outcomesUS 7,594,052 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,594,052
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.