- Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37
Patent outcomesUS 11,010,709 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,010,709 - Apple, Inc. v. Omni Medsci Inc.All claims unpatentablePTAB · Feb 14, 2025 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Remand
On remand, the Board determined claims 1–23 unpatentable, finding claims 3–6 and 8–14 obvious under the asserted combinations and leaving the prior findings on other claims intact.
RulingsRemand decision- RemandOther
“No appeal was taken as to claims 1, 2, 7, and 15–23. Consistent with the Federal Circuit’s Mandate, we have reviewed the merits and determine 3–6 and 8–14 are unpatentable, and recognizing that all other claims have previously been determined to be unpatentable, we determine that claims 1–23 are unpatentable.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Our mandate is to consider the argument the Court determined we did not consider in the Petitioner Reply, which argument, as each party acknowledges, both parties had the opportunity to discuss in the briefs that are in our current record. Under the circumstances, we determine that no additional briefing is required to carry out that mandate.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In our Final Decision, we determined that the term “identify an object” in claims 3 and 8 is distinguished from the term “detect an object,” e.g. as in claim 1. Final Dec. 8–10. The Court affirmed our construction of “identify an object” to mean “to recognize or establish an object as being a particular thing.” Fed. Cir. Dec. 10. The Court remanded, however, for further consideration of a “properly raised” argument Petitioner advanced in the Petitioner Reply with respect to our construction, referred to by the Federal Circuit as “the alternative argument.”. Id. at 2, 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner counterargues that it is not required to show why a person of ordinary skill would have considered every permutation of these references together and that it provided specific reasons for including features of Isaacson into Lisogurski’s device. Pet. Sur-reply 24–25. According to Petitioner, a person of ordinary skill would have had reason to incorporate Isaacson’s sensor (an arrangement of LEDs and detectors) into Lisogurski’s device, which taught that any known sensor layout could be used. Id. (citing Ex.1011, 17:39–45; Ex.1003 ¶¶ 239–240). Petitioner further argues that the ordinarily skilled artisan would have looked to Isaacson because it discloses a known arrangement for that the sensor component of Lisogurski’s device, and because it also taught solutions to potential problems identified in Lisogurski (e.g., with skin pigmentation). Id. (citing Pet. 68–69; Ex.1003 ¶ 243; Ex.1063, 7:59–62, Fig. 1).” slip op. at 9
Patent outcomesUS 10,517,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,517,484 - PTAB · Dec 11, 2024 · IPR2024-00963 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted obviousness grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner contends we should exercise discretion to deny institution because the court has not considered a motion to stay (Factor 1), jury selection in the District Court Litigation is scheduled to begin on February 17, 2026 (Factor 2), the parties have invested substantially in discovery by exchanging a high volume of documents and conducting extensive source code reviews (Factor 3), there is a high overlap between the challenged claims and those involved in the District Court Litigation (Factor 4), the parties are the same (Factor 5), and Petitioner’s arguments are meritless (Factor 6). Prelim. Resp. 35–36. Patent Owner acknowledges that jury selection in the District Court Litigation will not begin until two months after a Final Written Decision is scheduled to issue in this proceeding. Prelim. Resp. 35. On October 17, 2024, Petitioner offered the following Sotera Stipulation: “VusionGroup will not pursue an invalidity defense in Hanshow Tech. Co., Ltd. et al. v. SES-imagotag SA et al., Case No. 2:23-cv-00617 (E.D. Tex.) that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Ex. 1031. In view of all the circumstances, including the scheduled trial date and Petitioner’s Sotera stipulation, we decline to exercise discretion to deny institution.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we determine that Petitioner has demonstrated a reasonable likelihood that it will succeed on each of its challenges to patentability and we institute inter partes review. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’321 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. FURTHER ORDERED that the trial is authorized on all grounds set forth in the Petition; and.” slip op. at 39
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“1999)); see also Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding.” Pet. 6. Nevertheless, Petitioner also proposes constructions of certain “system” limitations, should the Board determine that the claims recite “means plus function” limitations, and argues that interpreted this way, such claims would be indefinite because they lack disclosure of sufficient algorithms for the claimed functions. Pet. 6–7. Petitioner acknowledges that, because the claims do not use the term “means,” there is a presumption against their being interpreted as means plus function limitations and that purported indefiniteness does not preclude the Board from addressing the patent patentability of the claims on sections 102 and 103 grounds. Id. (citing Sony Elecs. Inc. v. Jawbone Innovations, LLC, IPR2023-01352, Paper 7, 47 (PTAB Mar. 6, 2024); Ex. 1003 Houh Decl. ¶¶ 51–52); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Patent Owner argues the claims do not recite means plus function limitations and agrees with Petitioner that no claim construction is required. Prelim. Resp. 7–8. The standard is whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Williamson F.3d at 1349, Dyfan LLC v Target Corp., 28 F.4th 1360, 1365–1366 (Fed. Cir. 2022); see also Zeroclick LLC v. Apple Inc., 819 F.3d 1003, 1008–1009 (Fed. Cir 2018). Having reviewed the claims and the Specification, for purposes of institution, we determine that an ordinarily skilled artisan would have understood the subject matter that is claimed to have a sufficiently definite meaning as the name for structure so additional claim construction is required.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill (“POSITA” or “ordinarily skilled artisan”) as having “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics or automated object recognition methods and systems. Pet. 6 (citing Ex. 1003, Houh Decl. ¶¶ 18–19). Petitioner also states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes of this proceeding, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 7. 5 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed after March 16, 2013, we apply the AIA statutory basis for unpatentability. 6 U.S. Patent Application Publication No. 2012/0195363 (Ex. 1005) 7 U.S. Patent No. 8,139,817 (Ex. 1006) 8 U.S. Patent Application Publication No. 2011/0113461 (Ex. 1007) 9 U.S. Patent Application Publication No. 2014/0044348 (Ex. 1009) 10 U.S. Patent No. 8,634,601 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s undisputed description of the level of ordinary skill appears commensurate with the scope of the subject matters claimed and the references, we apply Petitioner’s description in this proceeding.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,701,321 - Aptiv Services US, LCC v. Microchip Technology Inc.Institution deniedPTAB · Nov 7, 2024 · IPR2024-00803 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–18 obvious over Verhaege, Verhaege and Miller, or Ker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelOther
“(‘POSITA’) in the field of the ’665 patent in 2007 would have at least a Master’s degree in electrical engineering, computer engineering, or a related field and three to five years of experience in integrated circuit design.” Pet. 10 (citing Ex. 1002 ¶ 51). Patent Owner argues that Petitioner’s definition is “excessively high.” Prelim. Resp. 3 n.1. In Patent Owner’s view, “a POSITA would have had a bachelor’s degree in electrical engineering or an equivalent technical degree and two years of experience in mixed-signal (i.e., analog/digital) circuit design.” Id. (citing Ex. 2003 ¶¶ 30–34). We need not resolve this dispute because our decision would be the same under either definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In Patent Owner’s view, “the claims require sharing ESD charge from one pad with a different I/O pad.” Prelim. Resp. 27. Patent Owner argues that charge sharing is the only way that charging the pad capacitance can reduce a maximum voltage, as recited. Id. at 24–25. Apart from the charge sharing, Patent Owner argues that the recited enable or control circuitry is not located in the circuit where the ESD event occurs. Id. at 27–33. Patent Owner argues that Petitioner disagrees with this interpretation. Id. Petitioner, though, argues that it would have been obvious to duplicate Verhaege’s and Ker’s protection circuits. See, e.g., id. at 18 (discussing claim 1 and Verhaege), 48 (discussing the Verhaege-Miller combination), 66 (discussing claim 1 and Kerr). For example, Petitioner argues that “a POSITA would have been motivated to use the improved protection circuit of Verhaege, apply it at every I/O pad, and share the ESD energy across multiple pad circuits as taught by Miller.” See id. at 48 (emphasis added). From statements like these, Patent Owner draws the conclusion that Petitioner must also be interpreting the claims to require charge sharing. Prelim. Resp. 25–27. For the reasons discussed in Section II.C below, Petitioner has not shown a reasonable likelihood of showing that any claims are unpatentable even under the implied claim construction used in its obviousness rationale. The Board need not expressly construe any claims in reaching that conclusion.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner argues, “It would have been obvious to a POSITA that, because an ESD event could occur at any I/O pad, the Verhaege invention should be repeated at every I/O pad.” Pet. 18 (citing Ex. 1002 ¶ 67); id at 30–32 (claim 6); id. at 43 (claim 14). Yet Petitioner acknowledges that “there were many obvious ways to activate multiple circuits during an ESD event.” Id. at 51. The Petition does not sufficiently explain why it would have been obvious to have chosen the way that is claimed. See id. at 18, 30– 32, 43. Rather, Petitioner’s obviousness rationale appears to be based on impermissible hindsight gleaned entirely from the challenged patent’s 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). For this additional reason, Petitioner has not shown a reasonable likelihood of prevailing in its challenges to claims 1, 6, and 14.” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,564,665 - Netflix, Inc. v. Gotv Streaming, LLCSome claims unpatentablePTAB · Nov 5, 2024 · IPR2023-00757 · APJ Steven M Amundson · IPR · Final written decision
Claims 1, 2, 4–10, and 12–16 are unpatentable as obvious over Hariki and Harris; claims 3, 11, and 17–20 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for patent owner
“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, the patentee “must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (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,” and thus the product is not coextensive with the patented invention, “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 showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). For example, “[a] prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Circ. 1988).” slip op. at 113
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“Conclusion About Obviousness/Nonobviousness For the reasons discussed above, the combined disclosures in Hariki” slip op. at 119
- ExcludeMotion to exclude, deniedNot reached
“In our analyses above, we do not rely on any of Exhibits 2023 to 2027. See, e.g., supra §§ III.C.2–III.C.4. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 135
Patent outcomesUS 8,989,715 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,989,715 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelMixed
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26
Patent outcomesUS 10,681,009 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,681,009 - Google LLC v. Dialect, LLCInstitution deniedPTAB · Oct 15, 2024 · IPR2024-00746 · APJ Brian J Mcnamara · IPR · Institution
Institution was denied for claims 1–9 and 12 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“speech recognition and processing (and more experience could substitute for less formal education, and vice versa).” Pet. 15 (citing Ex. 1002, Schmandt Decl. ¶¶ 11–15). Patent Owner does not explicitly dispute Petitioner’s characterization of a person of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of the level of ordinary skill appears consistent with the technology of the ’209 patent and the references, we apply Petitioner’s characterization of an ordinarily skilled artisan for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party has proposed a special definition or explicit construction of any claim term for purpose of this Decision. See Pet. 17 (“[e]xpress claim construction is unnecessary”); Prelim. Resp. 13 (“the Board need not engage in any pre-institution claim construction”). For purposes of this Decision, we understand Petitioner to propose that the claims be given their ordinary and customary meaning as understood by a person of ordinary skill under Phillips. 37 C.F.R. 42.104(b)(3).” slip op. at 9
- BurdenDecided for patent owner
“processes the request formulated in step 1[f] because the application carries out processing in accordance with the request. Pet. 41 (citing Ex. 1002, Schmandt Decl. ¶ 136 (as discussing Zadrozny’s conferencing schedule example)). Noting that a domain agent provides a functionality for a particular area or realm, such as a particular subject matter or device, Patent Owner argues that Coffman’s conversationally aware application does not teach limitation 1[g] because Coffman’s conversationally aware application does not process a request. Prelim. Resp. 29, 35–39. Noting that in Coffman, each application has its own context stack, Patent Owner argues that Coffman’s description of the context stack contents for various discourses does not support Petitioner’s theory that a conversationally aware application is invoked to process a user’s request. Id. at 37 (citing Ex, 1003, 27:1–2). As Patent Owner points out, calls to conversational sub-systems (see Ex. 1003, Fig. 2, 218, Fig. 4, 407) are hidden to the application. Prelim. Resp. 37 (citing Ex. 1003, 29:10–11), see also Ex. 1003, 29:7–9 (“CVM 401 will locate the requested conversational subsystem 407 (via the conversational subsystem services manager 406), drive its execution and return appropriately the results.”)). As a conversational subsystem, rather than a conversationally aware application executes the request, we determine that Petitioner has not demonstrated that Coffman discloses limitation 1[g]. d) Claim 1 conclusion In view of the above, we determine that Petitioner has not demonstrated that the combined teachings of Coffman, Kanevsky, Kneser, and that Petitioner has not shown a reasonable likelihood it would prevail in its challenge to claim 1 based on the combined teachings of these references.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,398,209 - Google LLC v. Dialect, LLCInstitution deniedPTAB · Oct 11, 2024 · IPR2024-00751 · APJ George R Hoskins · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood of prevailing on any challenged claim, failing to show Coffman identifies a domain agent associated with a matching context-stack entry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 8
- BurdenDenied
“institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. POTENTIAL DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d) Patent Owner urges us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution of review, on the basis that the Examiner considered and commented on Coffman and Kennewick during prosecution of the ’607 patent, and Petitioner’s reliance on Ross (in Ground One) and Lee (in Ground Two) does not cure a deficiency of Coffman relating to merged transcriptions that was recognized by the Examiner. See Prelim. Resp. 3–4, 14, 44, 47–50. Petitioner provides opposing arguments. See Pet. 10–12. In light of our determination above to deny institution on the merits per 35 U.S.C. § 314(a), we do not reach the § 325(d) issues raised by Patent Owner.” slip op. at 25
- Expert testimonyPetitioner expert discountedDecided for patent owner
“institution of review, Petitioner’s contention that Coffman’s CVM 14 / 202 / 401 includes a processor that identifies a domain agent (i.e., one of Coffman’s conversationally aware applications 11) associated with an entry in a context stack (i.e., context stack 217 / 405) that matches information in a merged transcription of user inputs. Details are provided below, but in overview, we determine Coffman’s disclosure is too high-level and non-specific, and Mr. Schmandt’s supporting testimony is too conclusory, to justify institution here. See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,447,607 - Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the Board did not reach the alternative Kates-505 grounds.
RulingsFinal written decision- 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 “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 13–14 (citing Ex. 1002 ¶ 44–47). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’887 patent and the prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“sensed condition outside a predetermined range.” Patent Owner’s proposed construction of the second wherein clause replaces the word “suspended” with “that would otherwise occur is stopped.” PO Resp. 8–9 (“emphasis omitted”). This phrase is not part of claim 1. Nonetheless, adopting Patent Owner’s proposed construction could potentially render the second wherein clause superfluous because the first wherein clause does not require transmission of the most recent reading to occur when the change is within the predetermined range. Consequently, the language of claim 1 does not require or suggest Patent Owner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“recent reading of the indicator stored in the memory during a period of a transmission interval in response to detecting a change in the sensed condition outside a predetermined range.” Ex. 1001, 14:63–67. This limitation also requires that “during the period of the transmission interval” the transmission “is suspended in response to detecting a change in the sensed condition within the predetermined range.” Id. at 14:67–15:4. Petitioner, therefore, must show that Kates-711 discloses a transceiver configured to transmit information or suspend transmission of the information during a “period” within a “transmission interval.” For the recited “transmission interval,” Petitioner contends that Kates’s “periodic intervals of ‘periodic monitoring’ is a [1.e] ‘transmission interval,’ during which there is a [1.e] ‘transmission period’ that includes a ‘report block.’” Pet. Reply 9. We agree with Petitioner for the following reasons. Kates describes the process shown in Figure 7 as follows: FIG. 7 is a flowchart showing one embodiment of operation of the sensor unit 102 wherein periodic monitoring is provided. In FIG. 7, a power up block 701 is followed by an initialization block 702, After initialization, the sensor unit 102 enters a low-power sleep mode. If a fault occurs during the sleep mode (e.g., the tamper sensor is activated), then the process enters a wake-up block 704 followed by a transmit fault block 705. If no fault occurs during the sleep period, then when the specified sleep period has expired, the process enters a block 706 where the sensor unit 102 takes a sensor reading from the sensor(s) 201. The sensor data is subsequently sent to the monitoring computer 13 in a report block 707. After reporting, the sensor unit 102 enters a listen block 708 where the sensor unit 102 listens for a relatively short period of time for instructions from monitoring computer 708. If an instruction is received, then the sensor unit 102 performs the instructions, otherwise, the process returns to the sleep block 703. Ex. 1004, 15:50–65. Based on this description of Figure 7, we find that Kates’s report block 707 corresponds to the recited “a period of the transmission interval” because it is a period of time when “sensor data is . . . sent to the monitoring computer.” Ex. 1004, 15:61. Further, block 707 is within an interval of “periodic monitoring” i.e., the process loop shown in Figure 7 beginning at block 703 and comprising steps 703, 706, 707, 708, 709, 710 and back to block 703. See also Ex. 1052 ¶ 22 (Dr. Neikirk testifying “each of [Kates’s] periodic intervals during which the ‘periodic monitoring’ process occurs is a ‘transmission interval’ . . . and the report block’ that occurs within this process is a transmission period.” (citations omitted)).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37
Patent outcomesUS 7,746,887 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,746,887 - Copeland Comfort Control LP / Ecobee Technologies Ulc v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00626 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–8, 14, 15, and 18 are unpatentable as obvious over the Kates-711 grounds; the alternative Kates-505 grounds were not reached.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For these reasons, in order to resolve the present controversy, we determine that the plain and ordinary meaning of “suspended”, as used in the challenged claims, encompasses both where a transmission that would otherwise occur is suspended by an action such as overriding a flag and where a transmission is not made because there is no change in an indicator or a change does not exceed a limit. Upon review the parties’ respective contentions, we determine that no other express constructions of any other claim term is required for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“2. Analysis Motivation to Combine and Reasonable Expectation of Success Petitioner contends that “[w]hile Kates-711’s teachings not only render obvious but also disclose the ‘memory’ elements ([1.d]-[1.e], [5]), Hitt provides explicit teachings of a memory storing information as claimed.” Pet. 42. Petitioner further contends that Hitt’s memory 155 “stores instructions for execution by processor 156 and also stores periodically sampled sensor data for retrieval by the processor for processing and/or transmission.” Id. at 43 (citing Ex. 1002 ¶ 112; Ex. 1005 ¶¶ 65, 67– 68). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify Kates-711’s sensor units with Hitt’s teachings of ‘memory’ to achieve the beneficial and predictable result of utilizing a memory to securely store sensor readings.” Id. (citing Ex. 1002 ¶ 114). Petitioner argues that an ordinarily skilled artisan would have been further motivated to modify Kates-711 “by storing these sensor values in memory as taught by Hitt to improve reliability” in light of Hitt’s teaching that “storage of sensor values in memory . . . ensur[es] that the values are available for calculations and not unintentionally lost or erased, e.g., due to power outages or interruptions.” Id. at 44–45 (citing Ex. 1002 ¶ 116; Ex. 1005 ¶¶ 67–68). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because Kates-711 “discloses that its controller may be a ‘conventional programmable microcontroller’; such microcontrollers were well-understood to commonly use a memory to, e.g., track data variables used for control applications.” Pet. 45 (citing Ex. 1002 ¶ 117). We have reviewed Petitioner’s evidence and contentions and find that Petitioner establishes that an ordinarily skilled artisan would have been motivated to modify Kates-711 with the teachings of Hitt and would have had a reasonable expectation of success. Ex. 1002 ¶¶ 112–117.” slip op. at 37
- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION12 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that claims 1, 3–8, 14, 15, and 18 of the ’887 patent are unpatentable.” slip op. at 46
Patent outcomesUS 7,746,887 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,746,887
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.