- Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentablePTAB · May 29, 2026 · IPR2025-00349 · APJ Jason M Repko · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Avellan did not disclose the claimed sequence of screen captures used to assemble a media stream.
RulingsFinal written decision- Skill levelOther
“Patent Owner submits a similar definition and does not dispute the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 22. No express finding is necessary. 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 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
“on ordinary and customary meaning. Pet. 14–15; PO Resp. 22. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We are persuaded by Patent Owner’s argument that Avellan does not anticipate claim 1 because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 26–29. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. Sur-reply 21. 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. 26–29; Sur-reply 21.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“All other challenged claims require the “generating” and “assembling” operations because they depend from claims 1, 12, or 17. Petitioner does not allege that the additional references—Durante, Ma, Suzuki, Wanamaker, Heikens, Matthews, or Wilsher—teach or suggest the “temporal sequence of screen captures” recited in claim 1. Rather, Petitioner’s reasoning in the challenges to the dependent claims pertaining to the screen captures mirror the rationale presented in the independent claim. See, e.g., Pet. 25 (arguing that Avellan’s screen captures correspond to the video content in the challenge to claim 2), 26–27 (arguing that Avellan obtains screen captures from a playback of a video on the webpage in the challenge to claim 4). Petitioner’s argument that Avellan teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103 depend on the reasoning and insufficiently supported characterizations of Avellan in the challenges based on 35 U.S.C. § 102, as discussed above. See Pet. 40–60. grounds based on anticipation under 35 U.S.C. § 102 or teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103, Petitioner has not met its burden to show that any challenged claim is unpatentable as anticipated by Avellan or obvious over any of the combinations of Avellan and the other cited references.” slip op. at 15
Patent outcomesUS 10,123,074 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,123,074 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01119 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 2, 27, 37, 58, 60-64, 67-79, 186, 187, 189, 191, 192, 197, 199-204, 208-216, 223, 225, and 230 were not proven unpatentable over the asserted combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9
- BurdenNot shown unpatentable
“Given our determination of how Ahn consistently describes the “touch and drag” gesture and “dragged” to mean the movement of a finger (or other object external to the touch screen), and in the absence of persuasive evidence in the figures or in other portions of Ahn to support the movement or appearance of a menu during a user input gesture, we determine that the present record does not support a conclusion that Ahn teaches or suggests a menu sliding onto a display or appearing during an input gesture such as a touch and drag gesture, as opposed to being displayed after such a gesture is completed.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Given our determination of how Ahn consistently describes the “touch and drag” gesture and “dragged” to mean the movement of a finger (or other object external to the touch screen), and in the absence of persuasive evidence in the figures or in other portions of Ahn to support the movement or appearance of a menu during a user input gesture, we determine that the present record does not support a conclusion that Ahn teaches or suggests a menu sliding onto a display or appearing during an input gesture such as a touch and drag gesture, as opposed to being displayed after such a gesture is completed.” slip op. at 27
- Expert testimonyDecided for patent owner
“Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29
Patent outcomesUS 10,656,754 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01116 · APJ Sharon Fenick · IPR · Final written decision
Petitioner did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, or 230 unpatentable because the asserted combinations did not establish the claimed blurring …
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“(Ex. 1003), that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof,” and that “[a]dditional years of experience could substitute for an advanced-level degree (and vice-versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–30).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29
Patent outcomesUS 10,656,754 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01115 · APJ Sharon Fenick · IPR · Final written decision
Apple did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, and 230 unpatentable over the asserted Ahn combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In the Decision on Institution in each proceeding, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advancedlevel degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 15–16. Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31
- BurdenNot shown unpatentable
“(3) Conclusion For the reasons discussed above, Petitioner has not shown limitation 2.d to be taught, suggested, or otherwise rendered obvious by Ahn and Chaudhri. Thus, we determine that Petitioner does not show by a preponderance of the evidence that claim 2 would have been obvious over the combination of Ahn and Chaudhri.” slip op. at 32
Patent outcomesUS 10,656,754 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,754 - 3shape Medical A/S v. Sirona Dental Systems GmbHNo claims unpatentablePTAB · Jun 21, 2017 · IPR2016-00481 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–10 were not shown unpatentable: Mushabac did not anticipate claims 1–5 and 9–10, and the asserted combinations did not render claims 1–8 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We determine that only the following claim phrase requires explicit construction for purposes of this Decision. 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.’” (internal citation omitted)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner provides evidence that a person of ordinary skill in the art (“POSA”) is someone with a D.M.D. (Doctor of Medicine in Dentistry or Doctor of Dental Medicine) or D.D.S. (Doctor of Dental Surgery) and at least several years of experience with 3-D technology used in dental implant treatment, planning, and surgery. Pet. 9–10 (citing Ex. 1004 ¶¶ 63–66). Alternatively, such a person may have a computer engineering degree or be a trained dental laboratory technician having substantial experience with 3-D technology and software applications used in dental implant treatment, planning, and surgery. Id. Patent Owner has accepted Petitioner’s definition of a POSA for purposes of this IPR. We adopt and apply Petitioner’s definition of a POSA in this Decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis of “optical measuring of the visible surfaces of the jaw” Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Dr. Ganz agreed under cross-examination that “Mushabac optically measures the teeth [a]nd then it uses … bone sounding to measure the surfaces of the jawbone.” Ex. 2026, 252:11–20. When directly asked where a three-dimensional optical measuring of visible surfaces of the jaw was “stipulated” in Mushabac, Dr. Ganz could not identify any passage to support that assertion made in paragraph 100 of his Declaration. Id. at 248:16–252:20. We find Dr. Ganz’s cross-examination testimony to be highly persuasive and consistent with the disclosures in Mushabac and the testimony of Dr. Erickson. For the reasons given above, we determine that Mushabac does not expressly disclose an “optical” (light-based) measurement of the “visible surfaces of the jaw” in three dimensions, as recited in claim 1 of the ’006 patent.” slip op. at 16
Patent outcomesUS 6,319,006 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,319,006 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms 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 patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14
Patent outcomesUS 7,165,927 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,165,927 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00085 · APJ Brian P Murphy · IPR · Final written decision
Claims 6–11 and 14 were not shown unpatentable as obvious over JPAP 213 and JPAP 237 because the petitioner did not establish a reasoned motivation to combine.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“A conclusion of obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined the prior art elements in the normal course of their work to yield the claimed invention. Id. We have rejected Petitioner’s interpretation of JPAP Paragraph 7 that underpins its motivation to combine argument and Dr. Sturges’ corresponding testimony. See Section II.B.3–4 above. Although Petitioner and Dr. Sturges do provide evidence of known alternatives for laterally transferring semiconductor cassette pods in overhead rail conveyance systems (Pet. 41 (citing Ex. 1028 ¶ 162)), their analysis of a reason or motivation to combine the systems in the manner claimed in the ’153 patent is lacking. The insufficiency of the evidence and analysis is particularly acute when the assertion that JPAP 213 paragraph 7 “expressly contemplates” such a combination is removed from the analysis. Petitioner’s remaining argument, that it would have been obvious for a person of ordinary skill to make the asserted modification because it was one of a “finite number of identified, predictable solutions” and “an arrangement of old elements . . . yielding no more than one would expect from such an arrangement,” is little more than a conclusory summary of KSR without the incumbent analysis based on the facts and evidence of the present case. Pet. 41–42 (citing Ex. 1028 ¶ 164); Reply 6–7, 11–13 (citing Ex. 1028 ¶¶ 162–165). For example, Petitioner argues that “any mechanical engineer would have understood that the number of moving mechanisms should always be reduced when possible” in support of its motivation to combine argument. Reply 11 (citing Ex. 1005 ¶ 7; Ex. 1028 ¶ 165). Petitioner’s cited evidence does not support the statement; rather it relies on an incorrect interpretation of JPAP 213 paragraph 7. Dr. Sturges also acknowledges in his deposition that paragraph 165 of his Declaration relies only on Petitioner’s incorrect interpretation of JPAP 213 paragraph 7. Ex. 1034, 165:9–17 (“Q. [L]ooking at paragraph 165, I don’t see any reference to anything besides paragraph 7 of the ’213 reference. Right? A. No. 165 doesn’t have any other cite.”). Neither Petitioner nor Dr. Sturges, moreover, provides a meaningful mechanical analysis or explanation beyond citing JPAP 213 paragraph 7 in support of Petitioner’s motivation to combine argument. In short, Petitioner’s conclusory paraphrasing of KSR is insufficient to satisfy its burden, particularly without the support of Petitioner’s interpretation of JPAP 213 paragraph 7. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoted with approval in KSR, 550 U.S. at 418). Therefore, for the reasons given above, we determine that Petitioner has not satisfied its burden of proving the asserted obviousness of claims 6–11 and 14 over JPAP 213 and JPAP 237 by a preponderance of the evidence.14” slip op. at 28
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP 213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not . . . that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP 213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Contrary to Petitioner’s argument, Dr. Bottoms’ deposition testimony is not inconsistent with his declaration testimony clarifying the interpretation of JPAP 213 paragraph 7, as discussed above. Reply 9 (citing Ex. 1043, 109:7–14). His deposition testimony is consistent with the disclosure of the retaining unit transfer means as a vertical hoist, not a lateral transfer mechanism. Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 9), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP 213. Rather, it mimics the error of the Petition in asserting that JPAP 213 “already contemplates modifying the Fig. 1 system . . . to do the work of moving [articles] B to and from the overhead locations BS, 11.” Ex. 1028 ¶ 165.11 Therefore, for the reasons given above, we find that JPAP 213” slip op. at 19
- ExcludeMotion to exclude, deniedDenied
“14 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 30–45; Reply 17–24. of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’153 patent. Reply 18–19, 21, 23. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 2–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
Patent outcomesUS 7,771,153 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 7,771,153 - Redline Detection, LLC v. Star Envirotech, Inc.No claims unpatentablePTAB · Jun 30, 2014 · IPR2013-00106 · APJ James B Arpin · IPR · Final written decision
Claims 9 and 10 were not shown unpatentable because the evidence did not establish a reason to combine the references to create the claimed inert environment.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner, however, does not cite precedent to support its position, and, during the oral hearing, Petitioner acknowledged that it was unaware of any supporting case law. Id. at 28:14-17. Moreover, we note that Dr. Checkel has “worked on automotive research projects with all of the ‘Big Three’ North American manufacturers as well as various suppliers to the industry.” Ex. 2018 ¶ 3. We are not persuaded on this record and with respect to this art that Petitioner has shown that a relevant distinction may be drawn between persons of ordinary skill in the United States and in Canada.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based on the present record, including Dr. Checkel’s unrebutted testimony, we are not persuaded that Petitioner has provided sufficient evidence to show that a person of ordinary skill in the art would have had reason to substitute the air used in Gilliam with inert gas alone from the mixture disclosed in Stoyle to achieve the invention recited in claim 9. Specifically, Dr. Checkel opines that: 136. The Stoyle apparatus heater relies on a high pressure process to heat oil to a temperature so as to enable flash evaporation and thus generate a large output of smoke. The Stoyle apparatus heats and forces a foam of oil and inert carbon dioxide gas under pressure through narrow annular passages in a heated metal assembly. This construction allows the oil to be pressurized and superheated above its atmospheric boiling temperature without significant degradation because of the uniform heating temperature and lack of oxygen. At the end of Stoyle’s heater tube, the superheated liquid oil is released to ambient conditions to form a mist. 137. A smoke generator relying on high pressure and flash evaporation to generate large volumes of smoke would be inappropriate and dangerous to use with the closed volume of an EVAP system, which is typically restricted to pressure of 1 psi (7kPa) or less. Even if the smoke generator had some modifications, the use of high pressure in generating the smoke and the production of large volumes of smoke at a rapid rate would risk damaging EVAP and fuel system components, possibly to the point of rupture. A person of skill would not consider Stoyle to be an analogous reference to add features missing from Gilliam. Ex. 2018 ¶¶ 136-137 (emphasis added; citations omitted). Dr. Checkel’s analysis of the differences between Stoyle and claim 9 of the ’808 patent is specific, well-supported, and persuasive. Therefore, we do not find sufficient evidence to support Petitioner’s argument for relying on Stoyle’s ventilation testing apparatus, in combination with Gilliam’s vacuum system leak-testing apparatus, to make the asserted substitution. We determine that the evidence of record is not sufficient to conclude that Gilliam and Stoyle provide a reason for one skilled in the relevant art to create an inert environment within a closed smoke-producing chamber and, subsequently, within a closed EVAP system during leak testing. In view of the differences between Stoyle’s and Gilliam’s apparatus, as detailed by Dr. Checkel, we are persuaded that a person of ordinary skill in the relevant art would not have reason to choose only the inert gas from Stoyle’s air/inert gas mixture and substitute inert gas alone for Gilliam’s use of air to achieve the invention recited in claim 9.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“iii. Combination of Gilliam and Stoyle For the reasons discussed below, we agree with Patent Owner, and we are not persuaded by Petitioner’s evidence or Petitioner’s reasoning that a person of ordinary skill would have had reason to substitute Stoyle’s use of inert gas, forced into the narrow compressed space between a bore and a plug, in place of the air used in Gilliam’s temperature-regulated, spark arrestor-governed system to generate smoke in a closed smoke-producing chamber. See Pet. 41-42. It is not sufficient for prior art references to teach or suggest the recited limitations of a claim. There must be some reasoning supported by rational underpinnings to combine the references to achieve the invention recited in the challenged claims. As the U.S. Supreme Court explained, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “guard against slipping into use of hindsight”).” slip op. at 22
- ExcludeMotion to exclude, deniedMixed
“Exhibits 2020, 2022, and 2024-2036: Referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017: Referenced in Mr. Saffie’s Declaration Petitioner seeks to exclude Exhibits 2020, 2022, and 2024-2036, referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017, referenced in Mr. Saffie’s Declaration, as allegedly irrelevant under FRE 403 and hearsay under FRE 801 and 802. Pet. Mot. Excl. 15. Petitioner, however, fails to identify any allegedly improper portions of any of these exhibits with any particularity. Id.; see Pet. Reply Mot. Excl. 5 (“For the reasons set forth in [Petitioner’s] motion, the remainder of [Patent Owner’s] evidence should be excluded.”). Such a general objection to these exhibits does not provide us with the information necessary to assess Petitioner’s reasons for seeking exclusion of these exhibits. Therefore, on this record, Petitioner’s motion to exclude Exhibits 2008, 2013, 2015, 2017, 2020, 2022, and 2024-2036 is denied. V. CONCLUSION Petitioner has not presented sufficient evidence to show by a preponderance” slip op. at 38
Patent outcomesUS 6,526,808 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 6,526,808
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.