• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

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

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · Jun 10, 2026 · IPR2025-00350 · APJ Jason M Repko · IPR · Final written decision

  Claims 7–12 were held unpatentable over Wannamaker alone or with Avellan; claims 1–6 and 13 were not shown unpatentable because Avellan did not teach the claimed screen-capture sequence and assembly.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 17. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions.” slip op. at 5

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 19–20; PO Resp. 18. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Yet paragraph 122 of Mr. Lipoff’s declaration merely repeats the Petition’s argument almost verbatim. Compare Ex. 1007 ¶ 122, with Pet. 28. Mr. Lipoff does not add any citation to Avellan or any other source that supports his testimony. See Ex. 1007 ¶ 122. Nor does Mr. Lipoff offer any additional technical reasoning than what is stated in the Petition. Testimony may be entitled to little weight if it merely restates the petition’s unsupported, conclusory assertions without adding supporting evidence or technical reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). That is the case here.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are persuaded by Patent Owner’s argument that claim 1 is not obvious over Avellan because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 21–23. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. PO Sur-reply 20. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 21–23; PO Sur-reply 20.” slip op. at 7

  Patent outcomesUS 10,524,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 10,524,002
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · May 28, 2026 · IPR2025-00351 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over the stated combinations; claims 10–26 were not shown unpatentable because Avellan does not teach limitations [10d]–[10f].

  RulingsFinal written decision

  • Skill levelOther

    “would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). The Petition further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art of delivering multimedia content. Resp. 18. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions. slip op. at 7

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 11; Resp. 18–19; Reply 5. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable

    “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Reasonable inferences of a POSITA may suffice to establish inherent disclosure in a prior art reference such as Farber. See Eli Lilly v. Los Angeles Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.”). Here, however, we find the Petition’s argument and evidence insufficient to establish by a preponderance of the evidence that Farber inherently discloses limitation [1b].” slip op. at 16

  Patent outcomesUS 11,140,441 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,140,441
• Kohler Co. v. Delta Faucet Co.Some claims unpatentable
  PTAB · Oct 1, 2025 · IPR2024-00700 · APJ Jane E Inglese · IPR · Final written decision

  Claims 1, 2, and 9 are unpatentable as obvious; claims 3–8 and 10–24 were not shown unpatentable because the asserted references failed to establish limitations including the claimed light pipe features.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s definition of a POSITA. Petitioner’s witness (Mr. Cook) qualifies as a POSITA under this definition, and, therefore, is qualified to opine from the perspective of a POSITA on technical matters included within the areas of expertise prescribed by the definition. As indicated above, Petitioner’s definition of a POSITA does not require education in the field of optics and professional experience designing or analyzing optical apparatus, unlike Patent Owner’s definition. We are aware, however, that Patent Owner’s witness (Dr. Klopp) has more extensive experience with optical systems and methods than Petitioner’s witness (Mr. Cook). Compare Ex 1003 ¶¶ 8–14, Ex. 2005, 39:21–59:17, with Ex. 2003 ¶¶ 3–20, Ex. 2004, 1–2, Ex. 1015, 10:22–13:25. Although Mr. Cook possesses excellent credentials in the field of mechanical engineering, his experience in the design and analysis of optical systems and methods is sparse and insubstantial compared to that of Dr. Klopp. Id. Due to this difference in experience levels, in instances where the witnesses express differing views on factual issues related to optical systems and methods, we will accord more weight to Dr. Klopp’s testimony than to Mr. Cook’s.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “through the light transmission portion and bottom output face 313 of light conductor 38, which teaches transmitting light in parallel with the longitudinal axis of the housing. Tseng does not disclose or teach that light is emitted through the side surface of annular protrusion 383 in a direction perpendicular to the longitudinal axis of the housing. Ex. 1004 ¶ 97. Petitioner’s assertions that this would be the case consist solely of conclusory statements, supported only by citations to Mr. Cook’s declaration. Mr. Cook, however, simply repeats Petitioner’s conclusory statements, without providing sound technical reasoning supported by objective evidence to explain and support his opinions. Ex. 2003 ¶¶ 101– 102, 105, 195–198, 202. We, therefore, accord little weight to Mr. Cook’s opinion on this particular matter because it “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Furthermore, Mr. Cook’s opinion conflicts with that of Patent Owner’s witness, Dr. Klopp, who opines that a “POSITA would understand from Tseng’s third embodiment that light from the LED would bypass the annular protrusion 383 of outer cliff 381, while transmitting downwardly toward the output face 313.” Compare Ex. 1003 ¶¶ 174–175, 190–194, with Ex. 2003 ¶¶ 101–102, 105. As discussed above, Mr. Cook is qualified to opine from the perspective of a POSITA on technical matters included within the expertise of a person meeting Petitioner’s definition of a POSITA, which do not include optics and optical apparatus. We, therefore, credit Dr. Klopp’s opinion over that of Mr. Cook on this particular factual issue of how it is directly related to optical systems and methods about which Mr. Cook possesses limited relevant experience. See Ex. 1003 ¶¶ 6–15 (experience in communication systems and electronics); Ex. 2005, 55:16–58:19 (design experience with electronics that use indicator lights or fiber-optic communications; no professional experience with light pipes, diffusers, or plumbing fixtures). Dr. Klopp possesses substantial research and professional experience with optical methods, fiber optic light pipes, light guides, diffusers, prisms, and analysis of faucets, spray heads, and plumbing fixtures. See Ex. 2003 ¶¶ 6–10 Supra 8 (discussing weight accorded to conflicting witness testimony); see also Resp. 2–3 (arguing that “Petitioner’s expert, Mr. Cook, is a mechanical engineer with substantial professional experience in electronics for high-voltage power systems and communications, but he has limited experience with the claimed subject matter.”).” slip op. at 34

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

    “would be used to construe the claim[s] in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it applies the plain and ordinary meaning of the claim terms. Resp. 7. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of resolving the dispute before us.” slip op. at 9

  • BurdenMixed

    “perpendicular to the longitudinal axis of Tseng’s housing (internal 33 and external 34 sleeves). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)).” slip op. at 40

  Patent outcomesUS 10,393,363 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,393,363
• Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentable
  PTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7

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

    “Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19

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

    “For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29

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

    “to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44

  Patent outcomesUS 10,806,124 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,806,124
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20

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

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

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

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Unified Patents Inc. v. Digital Stream IP, LLCSome claims unpatentable
  PTAB · Mar 9, 2018 · IPR2016-01749 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 4, 6–13, 20, and 22 are unpatentable as obvious; claims 2 and 3 were not shown unpatentable because the cited art did not establish portability or handheld use.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We agree with Petitioner. Although Petitioner bears the burden of correctly identifying the real parties-in-interest, “[w]e generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable presumption that Petitioner has complied with its obligation to identify all real parties-in-interest. See Zerto at 6–7. Patent Owner recognizes that “it [is] incumbent on the patent owner to come forward with some rebuttal evidence.” PO Resp. 52. In response to Petitioner’s identification of the real party-in-interest, Patent Owner contends that “this is not an instance where a petitioner’s certification in a petition can be taken at face value” because “evidence proffered by [Petitioner] in support of its position was withdrawn deliberately.” Id. at 53. We do not, however, require evidence beyond a petitioner’s identification of real parties-in-interest in the absence of rebuttal evidence that such identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit 1012 from the record does not constitute such rebuttal evidence. In view of the foregoing, we find that the circumstances here do not raise sufficient doubt about whether Petitioner has satisfied its obligation to name all real parties-in-interest. Therefore, we determine that the Petition should not be dismissed on this basis.” slip op. at 7

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

    “by applying the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner proposes an express construction for the claim term “transceiver.” Pet. 10. Patent Owner does not propose an express construction for any claim term. See generally PO Resp. In light of the parties’ arguments, we determine that no term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Rovira teaches each of the recited claim limitations, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us to Rovira’s teaching that “it is highly desirable to communicate program content information” because “having such information as music title, composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of customers, and possible loss of revenue due to subscription cancellation can occur if a subscriber has no method of knowing the title, composer or artist of the particular selection of music.”). Petitioner argues it, thus, would have been obvious to modify Schotz’s system to incorporate a signal that includes both audio data and program data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23 (“[T]his modification would result in Schotz’s user interface switch 18 selecting the digital audio data . . . within the digital audio signal [of Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency associated with audio data.”); id. at 27 (“[I]t would have been obvious to modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the selected digital audio data and the audio program information from the carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been obvious to modify Schotz to include the digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a digital to analog converter when using the digital signals disclosed in Rovira so that the user can hear the selected music.”). We are persuaded by Petitioner’s reasoning, including specifically the quoted material in the preceding string citation to the Petition, for modifying Schotz’s system to include Rovira’s signal as well as various components for processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and, in modifying Schotz’s system to include Rovira’s signal, would have made any necessary additional modifications such that Schotz’s system could process appropriately Rovira’s signal. See KSR, 550 U.S. at 421.” slip op. at 13

  Patent outcomesUS 6,757,913 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,757,913
• Institut Straumann AG / Dental Wings Inc. v. Sirona Dental Systems GmbHSome claims unpatentable
  PTAB · Nov 15, 2016 · IPR2015-01190 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–8 were held unpatentable as obvious over Bannuscher and Truppe; claims 9–10 were not shown unpatentable; the motion to amend was denied.

  RulingsFinal written decision

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

    “interpretation of the language used in claim 1 and the additional limitations of dependent claims 9 and 10. Patent Owner’s proposed construction also impermissibly reads limitations from the preferred embodiment of Figure 5 into claim 1. Patent Owner would limit the pilot hole location exclusively to a position directly over the implant position and require the drill bit to pass through the pilot hole while drilling a bore hole into the patient’s jaw. The language recited in claim 1, in the context of the ’006 specification, does not so-limit the “determinating a pilot hole” step. First, Patent Owner fails to consider the present participle form “determinating”5 at the beginning of the recited method step at issue. As a result, Patent Owner conflates the recited device production step with a specific process for drilling a bore hole into a patient’s jaw during tooth implant surgery. PO Resp. 14–15. For example, Patent Owner relies on Dr. Erickson’s Declaration testimony (and Dr. Benjamin’s deposition testimony) for the proposition that “pilot hole” is a term of art referring to “an initial hole through which a pilot drill passes during an operation.” Ex. 2002 ¶ 37 (cited at PO Resp. 16–17); see also PO Resp. 16–17 (citing Ex. 2023, 24:3– 22, 25:18–27:2, 52:2–9). The ’006 patent does not describe or reference any such “pilot drill” or “initial hole” being made during a tooth implant operation. Regardless, the claim limitation at issue is a step in a method of producing a drill template. It recites defining a pilot hole in a drill template with reference to the surfaces of neighboring teeth, nothing more. The function of actually passing a drill through a pilot hole in a drill template” slip op. at 11

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

    “Petitioner argues that the term “pseudo-x-ray picture” is not a term that has a commonly understood meaning to a POSA. Pet. 19 (citing Ex. 1002 ¶ 45 [47]). Patent Owner does not comment on the construction of “pseudo-x-ray picture.” PO Resp. 15–19. Having reviewed the complete record, we adopt Petitioner’s argument and evidence in support of Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture.” Therefore, we adopt Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture” as “any representation of measured data records of the three-dimensional optical measuring that can be superimposed on an x-ray image.” Pet. 19 (citing Ex. 1002 ¶ 49).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable

    “stylus is used to penetrate the surface of the gum repeatedly to measure the structure of the jaw bone displayed in Figure 25. PO Resp. 30–31 (citing Ex. 1007, 24:53–65 (“[S]tylus member 52 is provided with a sharp stylus 574 (FIG. 1) having a length sufficient[ly] long to penetrate gum tissue and contact the bone surface. . . . [P]ractitioner repeats the procedure of piercing the gum tissue in a region about the desired implantation site and taking point data until enough data has been collected . . . to map . . . the entire surface of bone 558 [Fig. 25] about the implantation site.”)). We agree with Patent Owner and find that the use of a sharp stylus to pierce the gum and take multiple data points via contact digitization of the jaw bone beneath the skin surface is not a 3-D optical measuring of the visible surfaces of a patient’s jaw.” slip op. at 21

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

    “would have been motivated to combine their teachings with respect to correlating X-ray imaging data of the jaw and 3-D surface data of the jaw and teeth. Reply 22–23 (citing Ex. 1002 ¶¶ 89, 92; Ex. 1008, 1:10–11 (“precise planning of the surgical operation is necessary”); Ex. 1010, 5:19– 25 (“it is possible to carry out the entire implantological, treatment and operation planning on a scientific basis . . . to implement holistic planning results in a precisely clinical manner”)). More particularly, Bannuscher discloses the desire to obtain “all the necessary [clinical] parameters” relevant to pre-surgical implant planning, which can be “combined together” (“correlated” in the language of claim 1) using planning simulation software, for transfer to a drill template. Ex. 1010, 5:44–6:13, 6:24–40, 7:38–8:4. As Dr. Erickson testified, it would have been desirable for a POSA to have as much diagnostic information as possible when planning for dental implant surgery. Ex. 1029, 31:12–21. Truppe discloses the advantage of correlating three-dimensional X-ray imaging data of the jaw and optical imaging data of the jaw and teeth, using simulation software, to obtain a “vivid” representation. Ex. 1008, 2:7–16, 3:19–28, 3:56–58; 4:1–5. Truppe, therefore, discloses a similar process to that disclosed in Bannuscher with respect to correlating 3-D X-ray imaging data and 3-D optical data representing the surfaces of the jaw and teeth, to generate the best possible representation of the patient’s jaw and teeth. Ex. 1002 ¶¶ 89–92. A POSA would have been motivated to use Truppe’s optical measurement system to generate 3-D surface data of the jaw and teeth for use in Bannuscher’s planning simulation software, in order to produce an enhanced image for determining the optimal bore hole and pilot hole in the drill template. Id.; Ex. 2023, 186:8–187:13 (“the optical imaging [of Truppe] would basically just enhance the diagnostic data [of Bannuscher]”). For example, a POSA would have optically measured the plaster model of the jaw and teeth referenced in Bannuscher and the patient’s actual jaw and teeth, as in Truppe, to produce a “vivid” image for correlation with the X-ray imaging data. Ex. 1002 ¶¶ 89, 92.20 Bannuscher’s determination of the optimized bore hole and corresponding pilot hole in the drill template would be based on the enhanced imagery generated from the correlated 3-D data sets. In short, we are persuaded that a POSA would have had reason to incorporate the teaching of Truppe’s enhanced 3-D optical measurement technique into Bannuscher’s method for correlating 3–D X-ray image and model geometry data sets, to determine an optimal bore hole and corresponding pilot hole in the drill template. For the reasons given above, we are persuaded that Petitioner has established a sufficient motivation for a POSA to combine the relevant teachings of Bannuscher and Truppe, with a reasonable expectation of success, by a preponderance of the evidence.” slip op. at 40

  Patent outcomesUS 6,319,006 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Fca US LLC v. Signal IP, Inc.Some claims unpatentable
  PTAB · Oct 19, 2016 · IPR2015-01118 · APJ John A Hudalla · IPR · Final written decision

  Claim 3 is unpatentable under § 103 over three instituted combinations; claims 1 and 2 were not shown unpatentable over Mock and Steele.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We disagree with Signal. In particular, FCA cites Dr. Lall’s testimony on “experience in vehicle electronics” and “experience in the design of automobile components.” Pet. 17 (citing Ex. 1009 ¶¶ 17–19). In addition, Dr. Lall testified at his deposition that an ordinarily skilled artisan also would have had the general background tools provided by obtaining a bachelor’s degree in mechanical or electrical engineering, as defined by the standard curricula for those degrees. See, e.g., Ex. 2001, 11:16–15:22. Dr. Lall also referenced his familiarity with these curricula based on his employment as a professor in the Department of Mechanical Engineering at Auburn University. See id. at 12:19–13:5; Ex. 1009 ¶ 4. Accordingly, we do not agree with Signal that Dr. Lall’s testimony as to the level of ordinary skill in the art for the ’374 patent is conclusory and/or lacking a factual basis. As such, we decline to discount the weight given to Dr. Lall’s testimony on that issue.6 Importantly, Signal never proposed an alternative definition of the ordinary level of skill in the art. See Tr. 48:17–25. As such, we have no indication from Signal about what particular aspects of FCA’s definition Signal believes are incorrect, if any. FCA’s proposed definition of the level of ordinary skill comports with the qualifications a person would need to understand and implement the teachings of the ’374 patent and the prior art of record. Accordingly, we apply it for purposes of this Decision.” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree with Signal. In particular, FCA cites Dr. Lall’s testimony on “experience in vehicle electronics” and “experience in the design of automobile components.” Pet. 17 (citing Ex. 1009 ¶¶ 17–19). In addition, Dr. Lall testified at his deposition that an ordinarily skilled artisan also would have had the general background tools provided by obtaining a bachelor’s degree in mechanical or electrical engineering, as defined by the standard curricula for those degrees. See, e.g., Ex. 2001, 11:16–15:22. Dr. Lall also referenced his familiarity with these curricula based on his employment as a professor in the Department of Mechanical Engineering at Auburn University. See id. at 12:19–13:5; Ex. 1009 ¶ 4. Accordingly, we do not agree with Signal that Dr. Lall’s testimony as to the level of ordinary skill in the art for the ’374 patent is conclusory and/or lacking a factual basis. As such, we decline to discount the weight given to Dr. Lall’s testimony on that issue.6” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We are persuaded by Signal’s arguments. “Distinctive” ordinarily means “characteristic of one person or thing, and so serving to distinguish it from others.” Distinctive, NEW OXFORD AMERICAN DICTIONARY (1st ed. 2001) (Ex. 3001). Accordingly, the plain and ordinary meaning of the limitation “distinctive codes for tire transmitters and vehicle function transmitters” must reflect that the recited codes distinguish tire transmitters from vehicle function transmitters. This is consistent with the surrounding language of claim 1, which recites different actions taken depending on whether the transmitted data contains “a distinctive code for tire transmitters” or “a distinctive code for the vehicle function transmitters.” This usage within the claim is important because “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d at 1314. In particular, “the context in which a term is used in the asserted claim can be highly instructive.” Id. We also note that FCA’s proposed interpretation would read out language from the claim. Under FCA’s theory, the claim does not require the codes to distinguish between tire transmitters and vehicle function transmitters, and encompasses codes that are merely distinct from each other. In effect, FCA would have us read the limitation as “the remote transmitters all having the same data format but distinctive codes.” The claim does not stop there, however. The full limitation is “the remote transmitters all having the same data format but distinctive codes for tire transmitters and vehicle function transmitters” (emphasis added). Thus, the codes are distinctive “for” tire transmitters and vehicle function transmitters, and the processor performs different actions depending on whether the transmitted data contains “a distinctive code for tire transmitters” versus “a distinctive code for vehicle function transmitters.” FCA’s proposed interpretation would read out this important aspect of the claim. Interpreting the claim to require the codes to distinguish between the two types of transmitters also is consistent with the Specification. We agree with Signal that the usage of “distinctive codes” in claim 1 is supported by the Specification’s disclosure of an exemplary message format with a “header” that “identif[ies] the source as a tire sender or a keyless entry fob.” Ex. 1001, 4:51–55, Fig. 4. Importantly, the header is separate and distinct from the “unique transmitter identification code,” an identifier unique to each transmitter that corresponds to the “ID” block in Figure 4. Id. at 4:55– 56, Fig. 4. In other words, the Header distinguishes types of transmitters (i.e., a tire sender or keyless entry fob) by their function or category, whereas the ID uniquely identifies a particular transmitter and distinguishes it from the others. An exemplary use of the ID block is illustrated with respect to step 94 of Figure 7, and it serves to show the different uses of the Header and the ID: After a message is determined to be a tire pressure message via category identification at step 78, a low pressure warning may be displayed “for the particular tire position which sent the message as determined by the identification code incorporated in the transmission,” among other things. Id. at 5:20–23, 5:32–44, Fig. 7.” slip op. at 11

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

    “We are not persuaded by Signal’s arguments because we do not agree with Signal that Schuermann’s separate interrogation implies that a sign-up procedure is unnecessary. Rather, Schuermann is silent as to whether and how a sign-up procedure would be used, so FCA is correct that Schuermann “leaves it to persons of ordinary skill in the art to use known techniques for accomplishing transponder sign-up.” Pet. Reply 4. As such, we are persuaded by FCA’s rationale that an ordinarily skilled artisan would have had reason to incorporate Mock’s sign-up procedure to ensure reliable identification of tire transmitters. See Pet. 29–30; Ex. 1009 ¶ 35. We additionally agree with FCA that an ordinarily skilled artisan would have appreciated the benefits of adding Mock’s sign-up procedure based on the cost reductions Mock mentions that are associated with a changeable identification code at the tire transmitter. Ex. 1005, 4:47–51. Signal’s counsel conceded that Mock teaches this benefit at the oral hearing. Tr. 38:4–25.” slip op. at 24

  Patent outcomesUS 5,463,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,463,374
• Google, Inc. v. Personal Audio LLCSome claims unpatentable
  PTAB · Sep 9, 2016 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4, 9, and 13 are unpatentable as obvious over Chase and Loeb; claims 5–8, 14–17, 28, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8

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

    “As stated by the Federal Circuit, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. Petitioner does not seek to combine the devices of Chase and Loeb physically. Rather, Petitioner argues that Loeb describes an example of a conventional interface used for controlling a device that plays music and contends that features of that interface would have been recognized as advantageous for Chase’s affiliate terminal. We are persuaded that a skilled artisan would have sought out examples of admittedly conventional interfaces to improve the functionality of Chase’s affiliate terminal. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded that Chase teaches away from discontinuing a currently playing song to advance to a next segment. According to Chase, “[t]he jock box is a physical representation of a DAC cart located in a studio. It provides 8 pushbuttons each with an LED and a small LCD display. Conceptually the jock box is a CD player with an automated changer.” Ex. 1007 ¶ 219. As explained above, and shown in Chase’s Figure 4, DAC 52 is a component separate from remote control terminal 54. The jock box is a “physical representation of a DAC cart.” Id. We read this to be a typographical error and view the jock box as a physical representation of a DAC card, e.g., DAC card 52. If “cart” is not a typographical error, it could refer to a “cart machine,” id. ¶ 36, which also is a component separate from remote control terminal 54 (Figure 4 shows line 56 communicating with a cart, not shown). In either case, Chase’s description of a jock box does not refer to the behavior of remote control terminal 54, which is described elsewhere as follows: The DJ may also request, through the remote control terminal, that the DAC 52 start play of the next segment queued in the DAC 52, stop play of the current segment, fast forward/rewind through the current segment or to a next/previous segment. The DJ may use up/down arrows on the remote control terminal to scroll through a play list displayed to the DJ and select, out of turn, a segment from the play list. Id. ¶ 186. This description is consistent with a device that can discontinue play of a current segment and skip to the next. Thus, Chase does not teach away from a player with that behavior.” slip op. at 24

  Patent outcomesUS 7,509,178 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,509,178

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.