• Apple Inc. v. Smith Interface Technologies, LLCAll claims unpatentable
  PTAB · Jan 26, 2026 · IPR2024-01084 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–4, 8–18, 22–30, and 34–39 are unpatentable as obvious over Shiplacoff and over Shiplacoff combined with Nan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof. Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner’s declarant, Loren Terveen, Ph.D., testifies that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 22. Patent Owner agrees with this definition. PO Resp. 13 (citing Dec. 5). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. 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).” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “according to the Phillips standard.” Pet. 4. Patent Owner contends that under the plain language of claim 1, the “one or more criteria” is satisfied when a “movement parameter” of “the second input” is detected to be “above a movement threshold.” PO Resp. 14. Patent Owner contends that under the plain language of claim 27, the “second one or more criteria” is satisfied when “a duration parameter” of the “second input” is detected to be “above a duration threshold.” Id. at 15. Patent Owner contends that the plain language of limitations [1j] and [1k] requires an operation capable of detecting a second input by a second contact that includes movement across a display in a direction, determining whether the second input meets or does not meet the recited criteria, and triggers performance of each of the corresponding display actions as appropriate. Id. at 15–19. Patent Owner 15. Id. at 21–23. Patent Owner contends that the plain language of limitations [27d]–[27f] recited in claim 27 require an operation that enables the device to detect a second input by a second contact that includes movement across the display in a direction, determine whether the second input meets or does not meet the two recited criteria, and trigger performance of each of the recited display actions as appropriate. Id. at 19– 20. Patent Owner contends that for “the second input” recited in limitations [1j] and [1k], “the second input” must be detected in the same operational context. Id. at 23–24. In particular, Patent Owner contends that limitations [1j] and [1k], and similar limitations recited in claims 15 and 27, “require a single, common contact event as the starting point of the claimed logic operations.” Id. at 24; see id. at 25–26. We do not need to determine whether Patent Owner’s proposed constructions are correct, because under either Petitioner’s or Patent Owner’s proposed constructions, we find that the prior art would have rendered all challenged claims obvious as discussed below in our patentability analysis.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “at 418; see also id. at 421 (“A person of ordinary skill is . . . a person of ordinary creativity, not an automaton.”). Patent Owner’s contention and the supporting testimony of Dr. Madisetti does not address Shiplacoff’s teaching of using a gesture, such as Shiplacoff’s flick gesture, to return to launch screen. We agree with Petitioner and Dr. Terveen in finding that Shiplacoff’s disclosure that “returning to the launch screen . . . is performed by performing a gesture” (Ex. 1004 ¶ 99) such as a flicking gesture (Ex. 1004 ¶¶ 126, 129; Ex. 1023 ¶ 13) teaches using a flicking gesture to return from home screen to launch screen. See Pet. 16, 22–24; Ex. 1003 ¶¶ 52–53, 59; Ex. 1023 ¶ 13; Reply 7–10. Because Dr. Terveen’s testimony is consistent with and supported by the teachings of Shiplacoff as a whole (in contrast to that of Dr. Madisetti), we credit the testimony of Dr. Terveen in finding that using a gesture to return from home screen to launch screen as taught by Shiplacoff, where the gesture is a flick gesture as taught by Shiplacoff, yields the predictable result of using a flick gesture to return from home screen to launch screen. Ex. 1023 ¶ 13; Ex. 1003 ¶¶ 52–61; KSR, 550 U.S. at 416.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “articulate why a person of ordinary skill in the art would have used Shiplacoff’s flicking gesture to switch from full screen mode to the launch screen. PO Resp. 47–49. Petitioner contends that Shiplacoff’s swipe up gesture teaches limitation [1j] by including a movement parameter above a movement threshold. Pet. 17–23. Petitioner contends that Shiplacoff teaches that a user can perform another gesture to return to the home screen. Id. at 23. Petitioner contends that when a gesture different from the swipe up gesture is used to return to the home screen, a person of ordinary skill would have used a flicking gesture because the flicking gesture has a different movement parameter than the swipe up gesture, namely, a movement parameter that does not meet the movement threshold. Pet. 23– 24 (citing Ex. 1004 ¶¶ 99–102, 167; Ex. 1003 ¶¶ 60–61). We agree with Petitioner for the reasons given in the Petition and as discussed above. We reiterate that using a gesture to return from home screen to launch screen as taught by Shiplacoff, where the gesture is a flicking gesture as taught by Shiplacoff, yields the predictable result of using a flicking gesture to return from home screen to launch screen. Ex. 1023 ¶ 13; Ex. 1003 ¶¶ 52–61; KSR, 550 U.S. at 416. We disagree with Patent Owner’s contention that Shiplacoff teaches away from using the flicking gesture to switch from full screen mode to the launch screen because, according to Patent Owner, Shiplacoff already uses the flick gesture to perform scrolling in full screen mode. PO Resp. 49–52 the same gesture in a given mode can be assigned to different functions depending on where, when, and how the gesture is input by the user, as discussed above. Reply 11–12 (discussing Shiplacoff’s teaching of associating the same tap gesture with different functions depending on where the tap occurs), 13–14 (discussing Duarte’s teaching of associating both a drag gesture and a scrolling gesture to the same mode). Ex. 1023 ¶¶ 16–19. We agree with Petitioner and Dr. Terveen, that based on the teachings of Shiplacoff (and, by incorporation, Duarte), a person of ordinary skill in the art would have recognized that a flick started in area 102 or near an edge of screen 101 and continuing onto screen 101 would be distinguished from a flick entirely within screen 101 based on location, and would perform a different function. Ex. 1023 ¶¶ 18–19. We also agree with Petitioner and Dr. Terveen, that Duarte teaches associating a gesture with one function when a modifier key is not pressed, and associating the same gesture with a different function when the modifier key is pressed, such that a flick performed when the key is not pressed would perform one function such as scrolling and a flick performed when the key is pressed would perform another, such as changing the display mode. Reply 15 (citing Ex. 2003 ¶ 64; Ex. 1023 ¶ 20). We agree with Petitioner that Shiplacoff does not teach away from using a flicking gesture to change from full screen mode to home screen because it “does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Reply 10 (quoting Depuy Spine, 567 F.3d at1327).” slip op. at 25

  Patent outcomesUS 10,649,578 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,649,578
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00572 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 because the prior-art combinations teach the limitations at issue under the Federal Circuit’s construction of “style.”

  RulingsRemand decision

  • RemandDecided for petitioner

    “We agree with Petitioner. Lemay Web discloses that the style settings of width, height, pause, and repeat for the pocket watch images can be changed by changing the values for width, height, pause, and repeat in the HTML file. Ex. 1004, 89–90. This results in changing the size, duration, and frequency of the display of the multiple pocket watch image objects without changing the image files or the Java applet. Id. That is, the 12 image objects of Lemay Web can be uniformly formatted by applying and altering the style settings of the HTML file, which is stored separately from the image objects and the Java applet. Id. at 88– 89. In our Final Written Decision, we wrote that “Lemay Web discloses that the image files that are displayed as the animation object are separate from the HTML.” Ex. 1004, 88–89.” Dec. 22. The Federal Circuit wrote that “how the Board evaluated what constitutes separateness in the prior art software is less than clear.” Opinion, 13 n.7. To be clear, the animation of Lemay Web comprises 12 different pocket watch image objects. Ex. 1004, 89. The HTML file that contains the style settings for the 12 different pocket watch image objects is stored separately from the 12 different pocket watch image objects. Id. at 88–91. The style of the 12 different pocket watch image objects can be altered by changing the values of the style settings in the separate HTML file, thus allowing the style to be uniformly applied to each of the associated 12 pocket watch image objects when the pocket watch image objects are created on the web page. Id.; see Ex. 1030 ¶¶ 28–29; Dec. 21–22. In conclusion for issue (B), we find that Lemay Web teaches applying the style located in the separate HTML file to the pocket watch image objects when creating the pocket watch image objects on the web page. Therefore, Lemay Web’s style is “defined separately from any single object” as claimed. Because Lemay Web’s style can be applied to one object and more than one object and Lemay Web’s style is defined separately from any single object, we find that the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “What you see in the bottom right is an excerpt from the Lemay Web book . . . [y]ou can still use the Java applet just by putting this applet code into your HTML file. So this shows the animator class is going to be run within height or how big a window within the browser should be allocated in this applet. You can . . . tell the animator class how long to pause in between each image. So that’s a style that’s being applied to all of the multiple images that make up this animation. Ex. 2029, 746:23–747:7. Patent Owner then asked GoDaddy’s expert “for each unique animation you want to create with this animator class that’s shown here, you’re going to have to have a unique set of HTML code with the settings along with any of the images you’ll want to associate with the animator class, right?” Ex. 2030, 793:7–11. GoDaddy’s expert testified, with reference to Exhibit 2027, 80, that “Yeah. I’m not a hundred percent sure I understand your question, but yes, if you had six animations on a page, for example, you’d have six blocks of markup that looked like the markup at the bottom right of that slide, starting with applet.” Id. at 793:12–16. In addressing Patent Owner’s question about “each unique animation,” GoDaddy’s expert provided a hypothetical example of a web page having six animations, and explained that the six animations have six blocks of markup. Ex. 2030, 793:13–16. We find that this testimony means that if a web page has six unique animations, then for each unique animation, a corresponding HTML file contains the style settings for the image objects of that animation, such that the “six animations on a page . . . have six blocks of markup.” Id. We find that the subsequent testimony of GoDaddy’s expert cited by Patent Owner is consistent with the expert’s initial testimony that Lemay Web’s style is “applied to all of the multiple images that make up this animation.” Ex. 2029, 747:5–7. We also find that the subsequent testimony is consistent with and supported by the disclosure of Lemay Web, which teaches that an animation has a set of image files and is added to a Web page using the Animator applet. Ex. 1004, 88 (“[Y]ou’ll learn just enough about Java applets to set up animation on your Web page. . . . To create animation using Java and the Animator applet, you’ll need . . . [a] set of image files . . . that make up your animation.”); see id. at 88–91. That is, Lemay Web, consistent with the testimony of GoDaddy’s expert, discloses that the style settings for the animation of the pocket watch in the HTML file are uniformly applied to the 12 pocket watch image objects. Id. at 88–91.” slip op. at 17

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00597 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 over both listed prior art combinations; Lemay Web teaches the claimed style under the Federal Circuit’s construction.

  RulingsRemand decision

  • RemandOther

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 2, 2026 · IPR2024-01087 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 7, 10–13, 15–17, 19, 20, 23–26, 29, 32–35, 37, 38, and 40–42 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 8. We continue to adopt Petitioner’s stated level of ordinary skill in the art.9 C.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 7. We agree with the parties that no express construction of any claim term is necessary.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “First, we find that Hackborn clearly discloses an embodiment in which swiping the finger, not just mere contact without motion (i.e., a tap), moves the blades of grass in the background wallpaper. Hackborn explicitly states: “In the example shown in FIG. 1, a user is swiping her finger across a touch-sensitive display screen of the computing device. In response, the blades of grass 105 displayed in the area of the screen swiped by the user are caused to bend or sway as if contacted by the user’s finger during the swipe.” Ex. 1004 ¶ 28. Because this description expressly refers to “swiping” or moving the finger “across” the display screen, it does not encompass a mere tap, or contact by the user that does not move on the display screen. If a single-tap-contact embodiment for moving the blades of grass in the background wallpaper is disclosed, it would be in an embodiment different from the swiping embodiment. Here, Petitioner is relying only on the swiping embodiment for moving the blades of grass in the background wallpaper. Thus, we disagree with Patent Owner that Hackborn discloses no need to distinguish a tap from a swipe. We find that in the swipe embodiment, it is important to distinguish a tap from a swipe, and thus there is reason, as Petitioner contends, for one of ordinary skill in the art to look to Westerman for implementation details on how to make such a distinction. Specifically, for recognizing a swipe from a tap, Westerman describes determining whether the finger path displacement exceeds a predetermined threshold (Ex. 1005 ¶¶ 19, 61), and examining the initial velocity of the contact at contact’s touchdown (Ex. 1005 ¶¶ 19, 62). As for Patent Owner’s noting that in several instances Hackborn generally refers to a user’s finger contacting items on the wallpaper, that does not undermine Petitioner’s positions, because in the “swipe” embodiment, the referenced contact would be a swipe, and not a single tap without any motion of the finger.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Pet. 39. This reasoning is unpersuasive. The reference in claims 17, 37, and 38 to “the at least some of the plurality of images” identifies the at least some of the plurality of images first recited in claim 1 on which claim 17 depends, and the at least some of the plurality of images first recited in claim 23 on which claims 37 and 38 depend. According to independent claims 1 and 23, however, the displaying in sequence of the at least some of the plurality of images must be based in part on the magnitude of the first contact. Pet. vii–vii, xiv. The social networking posts and images contained therein images, identified by Petitioner as being displayed in sequence by automatically moving one-by-one, have not been shown by Petitioner as being displayed based in part of the magnitude of the user contact, as Patent Owner correctly notes. PO Resp. 32–35. In its Reply, Petitioner attempts to change its reasoning for claims 17, 37, and 38 by shifting to rely on the background wallpaper of grass swaying in response to user swiping. Reply 13–14. This shift in reliance is a belated new argument and not entitled to consideration. We decline to consider it. Accordingly, Petitioner has not proved by a preponderance of the evidence that claims 17, 37, and 38 would have been obvious over Hackborn and Westerman. E.” slip op. at 27

  Patent outcomesUS 10,656,755 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,656,755
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Dec 31, 2025 · IPR2024-01085 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 were not shown unpatentable under either § 103 ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 9. We continue to adopt Petitioner’s stated level of ordinary skill in the art.5 C.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 4. We agree with the parties that no express construction of any claim term is necessary. D.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner (PO Resp. 13) that when Ording refers to user interfaces that are “intuitive and transparent,” “transparent” in that context does not mean optically transparent but something readily understandable, like the preceding word “intuitive.” That makes more sense in context. Patent Owner’s expert, Dr. Mahon, explains that Ording’s paragraph 28, where the phrase “intuitive and transparent” is found, is not concerned with optical transparency, but with increasing user satisfaction with portable devices by offering multifunctional operations on user interfaces based on finger input. Ex. 2012 ¶ 54. Neither Petitioner nor Dr. Cockburn explains why “transparent” in that context should mean optically transparent. We credit the testimony of Dr. Mahon, and reproduce paragraph 28 of Ording below: The various applications that may be executed on the device may use at least one common physical user interface device, such as the touch screen. One or more functions of the touch screen as well as corresponding information displayed on the device may be adjusted and/or varied from one application to the next and/or within a respective application. In this way, a common physical architecture (such as the touch screen) of the device may support the variety of applications with user interfaces that are intuitive and transparent. Ex. 1006 ¶ 28. We credit Dr. Mahon’s testimony that “Ording is addressing [in paragraph 28] user interfaces that are user-friendly and intuitive to navigate and operate.” Ex. 2012 ¶ 55.” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “The Zlider widget already is the least intrusive in the form as disclosed in the Ramos Paper/Ramos Video, placed off to the side of image content, not above and overlapping with image content. Petitioner’s semitransparency solution is for a self-created problem that otherwise does not exist, i.e., blocking the image by placing the Zlider widget directly over image content in Ording’s device. This is not reasoning with rational underpinning for making the Zlider widget partially semitransparent. Even assuming that the Zlider widget is properly placed directly over a camera image, making the Zlider widget semitransparent does not solve the intrusion problem, because the image and the Zlider widget may obscure each other, as shown in these illustrations provided by Patent Owner: [The illustrations show interference between a semitransparent Zlider widget and an underlying image] In its Reply, Petitioner asserts that it would have been well within the skill level of one of ordinary skill in the art to make adjustments to address a problem caused by such obscuring, such as by making the Zlider widget more visible as shown below: [The illustration shows one way Petitioner asserts one of ordinary skill in the art may apply to solve the obscuring issue (Reply 5–6)] Petitioner’s argument is misplaced. Although there may be graphic display techniques one of ordinary skill in the art may adopt to reduce the visibility problem if the Zlider widget were moved to directly above the image content as Petitioner proposes, that does not cure the problem of lacking a reasonable motivation to place the Zlider widget of the Ramos Paper/Ramos Video directly over image content. Still, there is the least obscuring and the least intrusion with the Zlider widget remaining where it is shown to be in the Ramos Paper/Ramos Video, side-by-side relative to the image content. It is irrational to make a modification that creates a problem, solely on the basis that a solution may be available to reduce the severity of the problem. Indeed, such a strained rationale shows that hindsight has played a part on Petitioner’s contention that a person of ordinary skill in the art would have put the Zlider widget over content as required by the claims.” slip op. at 30

  Patent outcomesUS 10,649,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,649,580
• Apple Inc. v. Ferid AllaniInstitution denied
  PTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,271,877
• Apple Inc. v. Ferid AllaniInstituted
  PTAB · Nov 4, 2025 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Institution

  The Board instituted review of claims 1–27 on all asserted grounds, finding a reasonable likelihood of unpatentability for claims 21 and 23–26.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 27 of the ’058 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art] at the time of the ’058 Patent would have had bachelor’s degree in computer engineering, electrical engineering, or a related field, with two to three years of experience with web-based information systems. Additional education or experience might substitute for the above requirements. Dec., ¶¶37-39. Pet. 3 (citing Ex. 1003 ¶¶ 37–39). Patent Owner contends that: A [person of ordinary skill in the art] at that time would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a 2 US Patent No. 6,119,155 issued Sept. 12, 2000 (Ex. 1004). 3 US Patent No. 6,037,934 issued Mar. 14, 2000 (Ex. 1005). 4 US Patent No. 6,353,839 B1 filed Apr. 30, 1998, issued Mar. 5, 2002 (Ex. 1006). 5 US Patent No. 6,493,702 B1 filed May 5, 1999, issued Dec. 10, 2002 (Ex. 1008). 6 US Patent No. 6,138,158 issued Oct. 24, 2000 (Ex. 1007). similar field. Alternatively, someone with an advanced degree and less professional experience or less education and more professional experience would also qualify as a [person of ordinary skill in the art]. Prelim. Resp. 11. Given that Patent Owner’s definition of a person of ordinary skill substantially overlaps with Petitioner’s definition, and given that Patent Owner does not challenge Petitioner’s definition, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the plain meaning of “beforehand locally stored” requires the claimed selection pages to be present on the local device before a user conducts a preliminary search. Even if we were to agree with Petitioner that a user could download and store selection pages to the local device, such downloading and storing must occur before the user locally performs a preliminary search in order for the selection pages to be “beforehand locally stored” within the scope of claims 1 and 27. We construe the terms “said selection pages being beforehand locally stored” recited in claim 1 and “said selection pages being . . . beforehand locally stored” recited in claim 27 as requiring the selection pages to be locally stored before a user locally performs a preliminary search.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with Petitioner. Rossman discloses times when accessing a web page over the network is unavoidable. Col. 8; see Pet. 21. Himmel teaches that using a bookmark to directly access a desired page is quicker than navigating through intermediate pages to get to the desired page. See Pet. 22–23, 25. Patent Owner does not address Rossman’s disclosure that a request to a network web page may be unavoidable, and does not address Himmel’s disclosure of making a direct request to the desired web page to save time and conserve network resources when accessing the desired web page. On this record, we agree with Petitioner that adding Himmel’s bookmarks to Rossmann’s cards provides the benefit of directly accessing a particular web function, thus reducing network traffic and data usage as compared to navigating multiple web pages to arrive at the particular web function.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 10,943,058
• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstituted
  PTAB · Apr 29, 2025 · IPR2025-00180 · APJ Scott B Howard · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Comcast would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2

  • Parallel petitionsDenied

    “We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. Petitioner has complied with our guidance by filing a statement ranking the petitions. See Practice Guide, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2025-00181 and IPR2025- meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts. warranted. Given our Decisions to Deny Institution in IPR2025-00181 and IPR2025-00182 and the official guidance we have received in the Practice Guide, we have no option but to deny Patent Owner’s request that we exercise our discretion to deny institution on all three of the petitions challenging the ’275 patent. Accordingly, we do not exercise our discretion to the deny institution in the instant proceeding. E. Anticipation of Claim 1 by Zhang” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of skill. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’275 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7 7 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner states that all of the limitations “should be given their ordinary and customary meaning to a” person having ordinary skill in the art. Pet. 19. Although Petitioner argues that none of the limitations are means-plus-function terms, Petitioner provides constructions to the extent that there are means-plus-function terms. Pet. 19–20. Patent Owner does not respond. See Prelim. Resp. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 8 If either party intends to argue a claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“Practice Guide”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ 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))). D. Parallel Petitions” slip op. at 9

  Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,785,275
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Mullen Industries LLCInstituted
  PTAB · Mar 31, 2025 · IPR2024-01472 · APJ Jeffrey S Smith · IPR · Institution

  The Board instituted IPR on claims 1–39, finding a reasonable likelihood that the challenged claims are unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We agree with Petitioner that much work remains in the district court case as it relates to invalidity because discovery is in its early stages and a Markman hearing has not yet occurred. We also agree with Petitioner, that Petitioner’s diligence in filing its Petition (a) less than five months after receiving Patent Owner’s infringement contentions and (b) prior to the parties briefing claim construction issues weighs against exercising discretionary denial.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see 37 C.F.R. § 42.4. Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of claims 1–39 of the ’633 patent. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 7 (citing Ex. 1002 ¶¶ 25–29). Patent Owner does not challenge Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us. For purposes of this Decision, we apply Petitioner’s statement as our definition of a person of ordinary skill in the art.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “to resolve the issues in the Petition. Pet. 8. In contrast, Patent Owner contends that the claim term “said first event and said second event,” and the claim term “said device includes motion sensing operable to distinguish between a plurality of different types of motion” require express construction. Prelim. Resp. 5–14. We do not need to resolve this dispute, because even under Patent Owner’s narrower constructions, Petitioner has shown a reasonable likelihood of success that at least one claim is unpatentable, as discussed below. 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.’”).” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,190,633
• Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2

  • Expert testimonyOther

    “being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25

  Patent outcomesUS 7,436,980 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,436,980

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.