• Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). 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). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13

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

    “We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16

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

    “On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37

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

    “On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37

  Patent outcomesUS 11,488,451 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,488,451
• Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “presented in the petition . . . and any [preliminary] 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). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,814,071
• Cisco Systems, Inc. v. Scale Video Coding LLCInstitution denied
  PTAB · Mar 24, 2025 · IPR2024-01371 · APJ Peter D Shapiro · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–3, 5–8, 10–13, or 15 would have been obvious over either asserted ground.

  RulingsInstitution decision

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

    “We are persuaded by Patent Owner’s arguments that Petitioner has not shown a reasonable likelihood that any of the three cited aspects of Shao- 028 teach or suggest that bandwidth-limited conditions are identified on the link between the video router and the client devices as required by the claims. To the contrary, the only specific discussion of identifying bandwidth in Shao-028 says that it takes place upstream of the video router, rather than downstream in the link in question. See Ex. 1005, 13:39–40. Moreover, the control requests from the client devices do not convey bandwidth conditions at all. We address each of the three arguments from Petitioner on this limitation below.” slip op. at 12

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

    “Accordingly, on this record, Petitioner has not demonstrated a reasonable likelihood that Shao-028 teaches or suggests “identify[ing] bandwidth-limited conditions of an internet protocol network between the video router and a [plurality/set] of video receivers.” As such, Petitioner has not demonstrated a reasonable likelihood that Shao-028 would have rendered independent claims 1, 6 or 11 obvious. As to dependent claims 2, 3, 5, 7, 8, 10, 12, 13 and 15, Petitioner makes no further allegations that would remedy the deficiency discussed above in regards to the independent claims. See Pet. 51–56. As such, Petitioner has not shown a reasonable likelihood that any of claims 1–3, 5–8, 10–13 and 15 would have been obvious over the asserted art in Ground 1. Petitioner in Ground 2 asserts alternative arguments for why independent claims 1, 6 and 11 would have been obvious in view of Shao- 023 and an additional reference Shao-423. Pet. 56–70. Because Ground 2 relies on the same argument for why Shao-023 teaches or suggests the limitation “identify[ing] bandwidth-limited conditions of an internet protocol network between the video router and a [plurality/set] of video receivers,” see Pet. 56, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on Ground 2 for the same reasons discussed above for Ground 1.” slip op. at 19

  § 103 obviousnesscites Phillips
  Patents in suitUS 11,019,372
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and 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).” slip op. at 10

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

    “Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,089,946
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and 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).” slip op. at 12

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

    “Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13

  • BurdenNot shown unpatentable

    “We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,814,071
• Apple Inc. v. Varia Holdings LLCInstituted
  PTAB · Mar 11, 2025 · IPR2024-01362 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–19 and all petition grounds after finding a reasonable likelihood that Apple would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the 5 Holloway et al., WO 02/49322 A2, filed Dec. 11, 2001, published June 20, 2002. Ex. 1006. 6 Pitroda, US 7,308,426 B1, filed Aug. 11,1999, issued Dec. 11, 2007. Ex. 1007. cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 7

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert contends that person of ordinary skill in the art (POSITA) [W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’974 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

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

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states that “[n]o formal claim constructions are required in this proceeding.” Pet. 6. However, Petitioner submits “preliminary” claim constructions proposed by the parties in the District Court case, including proposed constructions for the claim terms “transceiver” and “transmitter.” Pet. 7–9. Patent Owner states that it “does not dispute the Petition’s statement on claim construction for the purposes of this Preliminary Response.” Prelim. Resp. 8. Notwithstanding the parties’ statements disavowing the need for claim construction, in our analysis set forth below we consider construction issues regarding the independent claim terms “voice call communication,” “voice call signal,” “transceiver,” and “transmitter.” We invite the parties to further consider these issues going forward.” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,381,974
• Apple Inc. v. Varia Holdings LLCInstituted
  PTAB · Mar 11, 2025 · IPR2024-01363 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–32 and all grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “We do not agree that Zalewski is substantively identical to Willgert. As discussed below in Section IV.D.4.c), Zalewski disclosed an RFID transponder in a removable cover for a phone that was completely separate from the voice call components of the telephone itself. Ex. 2001, 7:63–8:3. Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirement of a “communication device determining the mobile communication device is in an operational space” was not met. Ex. 1002, 94–95. On this basis, Applicant also argued that claim requirements of switching between a voice call state and an RFID transponder state were not met. Ex. 1008, 18, 91, 134–135, 155; Ex. 1002, 530. In contrast, Willgert discloses an RFID transponder that is integrated with a mobile telephone, and so it cannot be distinguished on the basis that was used for Zalewski. Ex. 1004 ¶ 32. Accordingly, we decline to exercise discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 9

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

    “35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–32 and the grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “not agree, based on the current record, that the claims should be construed to encompass a device that has independent RFID transponder components that are separate from and independent of the components that provide voice call capability. During prosecution of related applications, in distinguishing Zalewski, Applicant disavowed such a broad interpretation. For example, Applicant asserted: The term “transceiver” . . . is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a "transceiver" so broadly as to incorporate an entire mobile device's circuitry, and in particular to be read on by two separate transmitters . . . . Ex. 1008, 40. Also: [A] person having ordinary skill in the art would have understood “a transceiver of a mobile communication device” to be a transmitter and receiver combined in a single package/housing/unit and sharing at least some common circuitry for both transmission and reception located within a mobile communication device. . . . . A person having ordinary skill in the art would understand Applicants’ disclosure as describing a single transceiver that can be switched from a first state in which it transmits voice call signals to a second state in which it transmits RFID signals. Id. at 92, 94. However, Petitioner also argues, and provides expert testimony in support, that it would have been obvious to integrate Willgert’s communications unit with the voice call capability of a mobile telephone. Pet. 53–54 (citing Ex. 1003 ¶¶ 129–130). At this stage of the proceeding, we find support for this position, including the fact that Willgert specifically teaches that the communications unit can be integrated into a mobile telephone. Ex. 1004 ¶ 32. Patent Owner challenges this argument based on the statement in Willgert that the communications unit can be “constructed so that the transponder will also function when the mobile telephone is switched-off.” Prelim. Resp. 13–15 (citing Ex. 1004 ¶ 31). However, Willgert provides this as one option, and we do not find that this statement teaches away from a fully integrated approach alternative.” slip op. at 30

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,405,947
• Apple Inc. v. Varia Holdings LLCInstituted
  PTAB · Mar 11, 2025 · IPR2024-01364 · APJ Norman H Beamer · IPR · Institution

  The Board instituted inter partes review of claims 1–39 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 8

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2

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

    “Petitioner argues that this combination would have been motivated by the fact that the Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user-friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 12–14 (citing Ex. 1004 ¶¶ 8, 30–32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 46–48; Ex. 1021; Ex. 1003 ¶¶ 72–76). Petitioner further argues that Bluetooth headsets were widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 15–16 (citing Ex. 1004 ¶¶ 8, 10; Ex. 1005, ¶ 8; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 77–79). Patent Owner does not address the issue of motivation to combine Willgert and Mooney. See generally Prelim. Resp. We find, based on the current record, that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Willgert and Mooney.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther

    “Willgert/Mooney combination does not teach or suggest the voice call signal requirements of the claims. As stated in the ’984 patent, the voice call signals relate to “the primary function of [the mobile communications device], i.e. to facilitate a user in communicating with another user of another communication device.” Ex. 1001, 3:47–49. The proffered combination of wirelessly connecting a Bluetooth headset to the Bluetooth receiver/transmitter of Willgert’s communications unit includes the fact that the Willgert communications unit is integrated into a mobile telephone. Ex. 1004 ¶¶ 30, 32. Thus, when the telephone is being used for its “primary purpose” of communicating with another user, the same voice call signal involved in that communication is also being transmitted from the telephone to the Bluetooth headset. We see no reason why the claimed “voice call signals” must be construed to exclude such signals. Patent Owner declined to address claim construction in its Preliminary Response, but is free to explore this issue post-institution. We also disagree, based on the current record, with Patent Owner’s assertion that Willgert’s RFID transponder 2 does not transmit “RFID transponder data” or “RFID transponder signals.” The very term itself — RFID transponder — as well as the explicit disclosures in Willgert, establish that the RFID transponder transmits RFID signals and data. Ex. 1004 ¶¶ 4, 14–19. Although, as Patent Owner points out, the ’984 patent discloses embodiments that “emulate” an RFID transponder, there is no reason to confine the scope of the claims to the disclosed embodiments and there is nothing in the ’984 specification or claims that disavows including Willgert’s RFID transponder within the scope of the claims. Also, Patent Owner’s reliance on the prosecution history regarding the Zalewski patent is misplaced. As Patent Owner has explained, Zalewski disclosed “‘an RFID transponder 110’ embedded in a removable cover for a phone or other device ‘such as an MP3 player.’” Prelim. Resp. 14 (citing Ex. 2001, 7:63–8:3). Based on this, Applicant successfully distinguished Zalewski because the RFID transponder functionality, being contained in a removable cover, was completely independent of the phone device, and thus the claim requirements of a transceiver or transmitter switching between a voice call state and an RFID transponder state were not met. Ex. 1002, 18, 91, 134–135, 155; Ex. 1009, 530. Zalewski was not distinguished based on whether or not the RFID transponder was emulated. Again, Patent Owner is free to explore the scope of the claim terms “transceiver” and “transmitter” post-institution.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,127,984
• Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentable
  PTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9

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

    “Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of 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)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22

  • Strike new argumentNew argument consideredDecided for petitioner

    “Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25

  Patent outcomesUS 9,008,483 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,008,483
• Howard Industries, Inc. v. Capsa Solutions LLCAll claims unpatentable
  PTAB · Feb 18, 2025 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 3 and 4 are unpatentable: claim 3 as obvious over Clark, Manner, and Santoro; claim 4 as obvious over Clark and Manner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have at least a four-year college degree in mechanical engineering, biomedical engineering, industrial design, or a closely related field and at least one year of experience in product development and design for commercial workstations and work platforms.” Pet. 7 (citing Ex. 1004 ¶¶ 17–18). Petitioner further contends that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a pertinent discipline involving mechanical product design, such as mechanical engineering, with 2-3 years experience in in [sic] the design, manufacture, or analysis of mechanical devices.” PO Resp. 18. Patent Owner alternatively argues that a person of ordinary skill in the art “with a 2-year mechanical engineering diploma and . . . 4-6 years of experience in in [sic] the design, manufacture, or analysis of mechanical components and devices.” Id. Patent Owner contends that “Petitioner submits a somewhat different, and broader, definition” of a person of ordinary skill in the art than Patent Owner’s definition because Petitioner’s definition includes industrial design which is a field that does not require the same level of hard sciences as Patent Owner’s definition. Id. Patent Owner further contends that “the Petition should be denied under either party’s definition of a [person of ordinary skill in the art] as Petitioner has failed to meet its burden of establishing a prima facie case of obviousness.” Id. at 18–19 (citing Ex. 2012 ¶¶ 45–47). We apply Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9

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

    “We have considered the parties’ respective arguments concerning the construction of this claim term and, for the following reasons, we adopt Patent Owner’s construction of “compartment” as “an enclosed space for containing an item.” First, Petitioner does not dispute that it agreed to adopt Patent Owner’s construction in the district court proceeding between the parties. Pet. Reply 5; Tr. 8:14–21. Second, Petitioner cites to several Board Decisions in which the panels construed claim terms even though the parties agreed to constructions in parallel litigation and argues that the agreement between Petitioner and Patent Owner in the parallel district court proceeding has no bearing on this proceeding. Id. (citing Cook Grp. Inc. v. Cook Med. LLC, IPR2017-00135, Paper 7 at 7–8 (PTAB May 16, 2017); Arris Int’l PLC v. Sony Corp., IPR2016-00834, Paper 54 at 26–29 (PTAB Sept. 28, 2017); Apple Inc. v. VirnetX Inc., IPR2015-00810, Paper 44 at 18–19 (PTAB Aug. 30, 2016)). But, those cited decisions are not precedential and two of them were decided under the “broadest reasonable interpretation standard,” not the Phillips standard, thereby rendering a stipulation between the parties in district court less informative to the panels’ determinations. See Apple, IPR2015-00810, Paper 44 at 18; Cook Grp., IPR2017-00135, Paper 7 at 7. More importantly, given Petitioner’s agreement with Patent Owner’s construction in the district court, we see no reason to apply a different construction here simply because Petitioner proposed that construction prior to agreeing to the construction with Patent Owner in district court. Tr. 11:21–25.8” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “There are two exceptions to the general rule that claims “are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365. First, “when a patentee sets out a definition and acts as his own lexicographer” or second, “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp., 90 F.3d at 1580). In order for the patentee to act as his or her own lexicographer, the patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning . . . [i]t is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to define the term. Id. Further, in order to establish disavowal of claim scope, the specification must “make[] clear that the invention does not include a particular feature . . . even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. As noted above, the underlying premise of Patent Owner’s proposed construction is that the language “disposed in” is broad enough to encompass compartments not “entirely in” or “contained in” the recited portion of the work platform.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “For the following reasons, we determine that the portions of the prosecution history of the ’650 patent relied on by Patent Owner do not “prov[e] the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled in the art.” Trivascular, 812 F.3d at 1063– 64.14 Patent Owner argues that the prosecution history redefined the term forward “by disclaiming workstations that are mounted on top of or over the height adjustment mechanism.” PO Resp. 29. Claims 3 and 4 recite “a work platform including a work surface and compartments for containing items” not a “workstation.” It is unclear what Patent Owner is referring to as the “workstation,” i.e., the recited “work platform,” the recited “work surface,” or the combination of “work platform,” “work surface,” and the recited “compartments.” Patent Owner injects further ambiguity by rephrasing the disclaimer, as “Applicant explicitly disclaimed carts having work stations mounted entirely to the top of the height adjustment mechanism (e.g., carts like Clark and Reeder).” Id. at 30 (emphasis added). Regardless of these 14 Because of our determination that the requirements for a clear and unmistakable disclaimer are not met by the cited portions of the prosecution history of the ’650 patent, we need not and do not reach the question of relevance of the statements in the prosecution of the ’650 patent to the claims of the ’668 patent. ambiguities, Patent Owner misinterprets the statements in the prosecution history. The applicant’s primary argument was that an ordinarily skilled artisan would not have incorporated moveable work surfaces above the “compartment” of Clark. Ex. 1033, 137–38. The applicant’s arguments, thus, do not support Patent Owner’s argument here that “workstations” should not be mounted “over or on top of the height adjustment mechanism.” See id.” slip op. at 32

  Patent outcomesUS 7,594,668 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,594,668

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.