- Cisco Systems, Inc. v. Umbra Technologies Ltd.All claims unpatentablePTAB · Jul 11, 2025 · IPR2024-00344 · APJ St John Courtenay III · IPR · Final written decision
The Board held claims 1–7 unpatentable under § 103 over Agarwala, finding Petitioner proved unpatentability by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level board ownOther
“2. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notTerm construed petitioner constructionPreamble not limitingDecided for petitioner
“[t]he prosecution history is consistent with the specification’s focus on the data beacons recited in the preamble as being the disclosed invention.” PO Resp. 24. Accordingly, we find the prosecution history also favors Petitioner regarding whether “[t]he term ‘data beacons’ recited in the preamble is an intended use and not limiting.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on the complete record, we agree with Petitioner” slip op. at 47
Patent outcomesUS 11,146,632 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,146,632 - Nuvei Technologies, Inc. v. Autoscribe CorporationInstitution deniedPTAB · Jun 12, 2025 · IPR2025-00089 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Nuvei did not show a reasonable likelihood that claims 1–27 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“providing” negative limitation of independent claim 1, and the similar negative limitations of independent claims 8, 15, 23, and 25. Accordingly, Nuvei has not shown a reasonable likelihood that it would prevail on its assertions that the subject matter of independent claims 1, 8, 15, 23, and 25 would have been obvious over the combined teachings of Stringfellow and Kloster.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or comparable field of study, and (2) at least two years’ experience working with and programming networked computer systems.” Pet. 9 (citing Ex. 1005 ¶ 36). Nuvei also argues that “[a]dditional education might substitute for some experience, and vice versa.” Id. In the Preliminary Response, Autoscribe does not address the level of skill in the art. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Nuvei’s proposed assessment of the level of ordinary skill in the art because it is consistent with both the ’621 patent and the asserted prior art, and it is supported by the testimony of Dr. Almeroth.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The supporting testimony from Nuvei’s declarant, Dr. Almeroth, on these issues fare no better. Dr. Almeroth provides no additional explanation beyond the arguments and evidence presented in the Petition to support Nuvei’s assertion that Kloster does not provide the payment data token to the payer during its token retrieval functions. See Ex. 1005 ¶ 100.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“argument that Kloster does not teach the “without providing” negative limitation required by each independent claim. Nuvei appears to contend that Kloster teaches this limitation in two different ways—namely, through either a “call back URL” or “API calls by the merchant.” Pet. 50–51 (emphasis omitted) (quoting Ex. 1008 ¶¶ 15, 23) (citing Ex. 1008 ¶ 24). We address Nuvei’s contentions in turn.” slip op. at 21
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,620,621 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. v. Multimedia Technologies Pte. Ltd.All claims unpatentablePTAB · May 12, 2025 · IPR2024-00353 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–4, 6, 8–10, 12–17, and 19 are unpatentable as obvious over Kim, WD-Manual, and Bae, with Coburn added for claims 6, 12, and 19.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“See Pet. 123 (citing Ex. 1005 ¶¶ 267, 269). LG argues—and we agree—that, because Kim already provides functionality that updates the EPG information when the user performs a search, it would not require a leap of logic to incorporate Bae’s channel number selection window 330 that contains numbers 0 to 9, together with Coburn’s technique that predictably narrows the channel identifiers displayed based on the user selecting numbers sequentially, into Kim. See id. at 123–126. LG merely reiterates this position in the Reply and, therefore, does not shift its obviousness theory with respect to dependent claim 6. See Pet. Reply 38–41. c. Summary In summary, LG has demonstrated by a preponderance of the evidence that the subject matter of dependent claims 6, 12, and 19 would have been obvious over the combined teachings of Kim, WD-Manual, Bae, and Coburn.” slip op. at 85
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 27
Patent outcomesUS 9,055,254 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,055,254 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00095 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–18, so no trial could be instituted on them.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Based on our review of Exhibit 2002 and the USPTO’s public records, we conclude that a disclaimer of claims 1–18 of the ’855 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of April 24, 2025. Ex. 2002. Because we cannot institute an IPR based on disclaimed claims and all of the challenged claims of the ’855 patent have been disclaimed, no trial will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (Decision” slip op. at 3
NonePatents in suitUS 11,637,855 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00093 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–20, leaving no claims on which to institute IPR.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Based on our review of Exhibit 2002 and the USPTO’s public records, we conclude that a disclaimer of claims 1–20 of the ’257 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of April 24, 2025. Ex. 2002. Because we cannot institute an IPR based on disclaimed claims and all of the challenged claims of the ’257 patent have been disclaimed, no trial will be instituted. See Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (Decision” slip op. at 3
NonePatents in suitUS 11,582,257 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00092 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–19 before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and, if the statutory disclaimer is filed properly, “[n]o [IPR] will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the USPTO. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see also Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
Discretionary denialPatents in suitUS 11,516,231 - Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentablePTAB · Apr 16, 2025 · IPR2024-00110 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1, 2, and 4–6 are unpatentable as obvious over Kim, Invisalign, and Salah.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The parties agree that the proposed levels of ordinary skill in the art are “not materially different.” PO Resp. 4; Reply 2. The difference, essentially, is that Patent Owner more explicitly describes the members on the interdisciplinary team, and argues that it would be necessary to consult with such individuals, particularly with persons experienced in dentistry or orthodontics, whereas Petitioner’s proposal states that one “could” consult with such individuals. However, Patent Owner’s argument that it would be necessary for a person of ordinary skill in the art to consult with an individual having experience in dentistry and/or orthodontics is narrower than Patent Owner’s proposed level of skill in the art, which describes “individuals familiar with medical imaging, dental imaging, dentistry, and/or orthodontics.” PO Resp. 4 (emphasis omitted, emphasis added). Neither party presents any argument explaining how the differences in the respective educational backgrounds and work experience in the proposed definitions affect the dispute. Having considered the parties’ respective arguments and the evidence of record, we adopt a modified version of the parties’ proposals, and determine for purposes of this Decision that a person of ordinary skill in the art would have an advanced degree, such as a Masters’ Degree or Ph.D. in computer science, computer engineering, electrical engineering, or a related field, with at least two years of work in computer vision, image analysis, medical imaging, or related areas. Further, a person of ordinary skill in the art could have less education but significant professional experience in one or more of these fields, and could be a member of an interdisciplinary team which would have included individuals familiar with medical imaging, dental imaging, dentistry, and/or orthodontics.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are satisfied that Dr. Foroosh qualifies as a person of ordinary skill in the art. First, Dr. Foroosh has the required educational background, with, for example, a Bachelor of Science in Electrical Engineering, a Master of Science in Electrical Engineering, a Master of Science in Computer Science and Engineering, and a Ph.D in Computer Science. Ex. 1003, 7; Ex. 1002 ¶ 3. Second, Dr. Foroosh has the required work experience, with, for example, research in machine learning, deep learning, and neural networks, image and video processing and analysis, and computer vision. Ex. 1003, 2, 4–8; see also id. at 9–13 (list of projects), 14–29 (list of publications), 32 (list of interdisciplinary research); Ex. 1002 ¶¶ 2–5 (describing work experience), 6–9 (describing research experience). Dr. Foroosh has also been part of interdisciplinary research efforts including those relating to the medical or dental fields, such as, research on the intersection of computer vision and augmented reality in medical and surgical interventions. Ex. 1003, 32; Ex. 1002 ¶ 12. Dr. Foroosh describes a research project, Modeling and Visualization of Muscoloskeletal Structures in Dental CT-Scan (2006–2007), where he “developed algorithms for [threedimensional (‘3D’)] registration, modeling and visualization of maxilla and mandible of patients for dental surgery using Computer Aided Tomography (CAT) scanning.” Ex. 1002 ¶ 6. He describes another project for the National Science Foundation, which “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans.” Id. ¶ 7. He was also a co-author on Alignment of Maxillofacial CT Scans to Stone- Cast Models Using 3D Symmetry for Backscattering Artifact Reduction, Proceedings of Medical Image Understanding and Analysis Conference (MIUA) (2006), and an adviser for a dissertation directed to “Sub-pixel Registration in Computational Imaging and Applications to Enhancement of Maxillofacial CT Data,” which “focused on registration and alignment of 2D images and 3D digitized data obtained by dental CT scans and dental imprints of a patient.” Id. ¶¶ 8, 9. Although Dr. Foroosh is not a dentist or orthodontist, we determine that the breadth of his background, as fully set forth in Exhibit 1003, qualifies him to provide testimony from the perspective of a person of ordinary skill in the art. In short, we agree with Petitioner that Dr. Foroosh has “ample experience with medical and dental imaging,” as set forth above. Reply 2 (citing Ex. 1002 ¶¶ 6–9; Ex. 1003, 14, 15, 21, 26, 32). Moreover, we are afforded broad discretion in assigning weight that is to be accorded expert testimony. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no reasonable trier of fact could have done so.”); see also CTPG6 34–36. In the analysis that follows, when applicable, we weigh the credibility of Dr. Foroosh’s testimony, including with respect to Patent Owner’s arguments regarding Dr. Foroosh’s testimony on the Invisalign reference, and provide our reasons therefore.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“proposed constructions. As there is no dispute between the parties, and after reviewing the complete record, we determine that express construction of “interior tooth outline,” “exterior tooth outline,” and “shape of an orthodontic aligner” is not necessary for purposes of this Decision. Further, Patent Owner does not dispute Petitioner’s interpretation of limitations 1(1) and 1(2), or Petitioner’s identification of the corresponding function and structure in limitation 1(3). We agree with Petitioner that step 2 of claim 1 recites a conditional limitation, that, if met, is not needed to be performed. See, e.g., Cybersettle, Inc. v. Nat’l Arbitration Forum, 243 F. App’x 603, 607 (Fed. Cir. 2007) (“It is of course true that methods steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). This is supported by the Specification: In one embodiment, the dentition image is the aligner image. In other words, the same updated image makes it possible not only to see the aligner outline 28 but also to see the dentition outline 16, through the aligner (FIG. 3). This single image therefore makes it possible to compare aligner 20 and dentition outlines. Advantageously, readjustment step 2), described later, is not needed. Ex. 1001, 6:15–20 (emphasis added). Further construction of limitations 1(1) and 1(2) is not necessary for purposes of this Decision.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“f) Conclusion Independent Claim 1 Therefore, we determine that, on the complete record, Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combination of Kim, Invisalign, and Salah. 5. Remaining Claims Petitioner contends that the combination of Kim, Invisalign, and Salah teach the additional limitations of claims 2 and 4–6 and, in support, identifies certain passages and figures in the references and explains their significance with respect to the corresponding limitations. Pet. 34–46. Patent Owner does not separately challenge these contentions. See generally PO Resp. We have reviewed Petitioner’s contentions, which we find persuasive and adopt as our own. Therefore, we determine that Petitioner has also shown those claims to be unpatentable by a preponderance of the evidence. Id.” slip op. at 49
Patent outcomesUS 11,109,945 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,109,945 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Mar 31, 2025 · IPR2025-00030 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR of claims 1–20 on all six asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11, 5–6. These factors relate to “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 20
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“they “apply a preponderance of the evidence standard to determine patent validity, which is a lower burden of proof than the clear and convincing evidence standard required in district court.” Prelim. Resp. 1. According to Patent Owner “[t]his discrepancy undermines the presumption of validity afforded to issued patents and makes it easier to invalidate a patent in an administrative forum than in a judicial proceeding.” Patent Owner cites no authority or evidence to support this argument. Moreover, the Supreme Court has held that the decision to grant a patent “is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the [U.S. Patent and Trademark Office’s (“USPTO’s” or “PTO’s”)] authority to conduct that reconsideration.” Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 584 U.S. 325, 334–35 (2018).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner also explains why a person of ordinary skill would have been motivated to combine the cited references, again citing annotated figures from the cited references, specific disclosures from the references, and supporting testimony from Dr. Larson. See, id. at 21–23. Based on our review of the evidence and arguments, we determine that Petitioner has established a reasonable likelihood that that the cited references disclose all the limitations of the challenged claims, and that Petitioner has established why it would have been obvious to a person of ordinary skill to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner on all asserted Grounds. See Pet. 16–97 (citing Ex. 1003 ¶¶ 96–268).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,498,593 - PTAB · Mar 24, 2025 · IPR2024-01420 · APJ Frances L Ippolito · IPR · Institution
Instituted IPR of claims 1–19 on all presented grounds after finding a reasonable likelihood that at least one claim is unpatentable, and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–19 of the ’402 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’402 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner filed a Sotera stipulation. Paper 11. Petitioner’s Sotera stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution, Paper 24 at 12). Accordingly, this factor weighs against discretionary denial.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’402 patent “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent technical training. Additionally, they would have at least three years of experience in designing or programming internet-related processes, such as user profile management and/or web-based targeted advertising.” Pet. 5 (citing Ex. 1003 ¶¶ 53–55). For purposes of the Preliminary Response, “Patent Owner applies Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’).” Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner: “Because the prior art asserted herein discloses the preferred embodiment within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims as part of these proceedings.” Pet. 9 (citing Ex. 1003, ¶ 57). Patent Owner responds that, at the preliminary stage of this proceeding, “no term needs explicit construction to resolve any controversy between the parties.” Prelim. Resp. 9. We do not need to construe any terms expressly to reach our decision on institution. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,562,402 - PTAB · Mar 24, 2025 · IPR2024-01316 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–10 on all three obviousness grounds, finding a reasonable likelihood that Home Depot would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In the absence of specific evidence, we will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay an individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II, LLC v. Continental Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (Decision Granting Request for Rehearing) (informative) (“Sand Revolution”). If Home Depot were to file a motion to stay in the EDTX Litigation, we decline to speculate how the district court would rule on such a motion. Accordingly, this factor is neutral. slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“RavenWhite does not dispute Home Depot’s assertion that the Examiner did not meaningfully address Hinton and Varghese, either alone or in combination, during prosecution of the ’823 patent. See Ex. 1003. Stated differently, with respect to factor (a), the Examiner did not apply the teachings of Hinton and Varghese, either alone or in combination, to teach 6 All references to the page numbers in the prosecution history of the ’823 patent refer to the page numbers inserted by Home Depot in the bottom, right-hand corner of each page in Exhibit 1003. or suggest the limitations of the originally presented claims of the ’823 patent, nor did the Examiner apply the teachings of these references to account for language that was added via amendment during prosecution (i.e., a “first client device browser storage area” and a “second client device browser storage area”). With respect to factor (b), RavenWhite does not provide an explanation as to how the teachings of Flash that were applied by the Examiner during prosecution of the ’823 patent are cumulative to the teachings of Hinton and Varghese applied by Home Depot in the Petition. Turning to factor (d), RavenWhite asserts that there is overlap between arguments that were presented during prosecution of the ’823 patent to distinguish the then-pending claims over Flash and the arguments presented in the Preliminary Response to distinguish the challenged claims over Hinton and Varghese. See Prelim. Resp. 25. This overlap, by itself, does not warrant discretionary denial because, as we explain below, Home Depot persuasively explains how the teachings of Hinton and Varghese account for the claimed “first client device browser storage area” and “second client device browser storage area.” See infra Section II.D.4.b and II.E.2.b. Accordingly, we are not persuaded by RavenWhite’s arguments that the Petition presents substantially the same art or arguments that were considered previously by the Examiner during prosecution of the ’823 patent. b. Becton, Dickinson Factors (c), (e), and (f) Advanced Bionics further informs our evaluation of factors (c), (e), and (f). Advanced Bionics indicates that satisfying the first part of the framework is a prerequisite to reaching the second part of the framework. See Advanced Bionics, Paper 6 at 8, 10. As we explain above, we determine that the Petition does not present the same or substantially the same art or arguments that were presented previously to the Office during prosecution of the ’823 patent. As a result, we need not reach whether Home Depot has demonstrated that the Office erred in a manner material to the patentability of the challenged claims of the ’823 patent. 2. Summary For the reasons given above, we conclude that the circumstances presented here do not warrant exercising our discretion to deny institution under § 325(d). Notably, the Examiner did not meaningfully address Hinton and Varghese, either alone or in combination, during prosecution of the ’823 patent. As a result, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construction standard as in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). That is, claim terms generally are construed in accordance with their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art, in view of the specification and the prosecution history pertaining to the patent at issue. See id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Wills, Home Depot argues the following: [a] person of ordinary skill in the art at the time of the alleged invention of the ’823 patent (October 31, 2006) . . . would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with computer networks and digital information transmission techniques or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 6 (citing Ex. 1002 ¶ 65). In the Preliminary Response, “[RavenWhite] applies [Home Depot’s] definition of a person of ordinary skill in the art.” Prelim. Resp. 6 (citing Pet. 6). At this stage of the proceeding, we adopt Home Depot’s uncontested assessment of the level of skill in the art because (1) it is consistent with the ’823 patent and the asserted prior art; and (2) it is supported by the testimony of Dr. Wills.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,594,823
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.